UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
DENNEROLL HOLDINGS PTY LIMITED and
DENNEROLL INDUSTRIES
INTERNATIONAL PTY LIMITED,
Plaintiffs,
v.
CHIRODESIGN GROUP, LLC and MARIE L.
WEBSTER, INDIVIDUALLY AND DBA
CHIRODESIGN GROUP,
Defendants.
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§ Civil Action No. ____________
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§ JURY
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ORIGINAL COMPLAINT
Plaintiffs Denneroll Holdings Pty Limited and Denneroll Industries International Pty
Limited (collectively “Denneroll” or “Plaintiffs”), by and through their undersigned attorneys,
file this Original Complaint for Patent Infringement and Unfair Competition against Defendants
ChiroDesign Group, LLC and Marie L. Webster, individually and doing business as ChiroDesign
Group (collectively “CDG” or “Defendants”), and allege and state as follows:
I.
THE PARTIES
1.
Plaintiff Denneroll Holdings Pty Limited (“Denneroll Holdings”) is a company
organized under the laws of Australia with a business address of 29 Woodward Street, Cromer
NSW 2099, Australia. Denneroll Holdings is the owner of U.S. Patent No. 8,713,732.
2.
Plaintiff Denneroll Industries International Pty Limited (“Denneroll Industries”) is
a company organized under the laws of Australia with a business address of 29 Woodward
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Street, Cromer NSW 2099, Australia. Denneroll Industries markets and sells a line of spinal
orthotic devices and is the exclusive licensee of Denneroll Holdings for U.S. Patent No.
8,713,732.
3.
Defendant ChiroDesign Group, LLC is a limited liability company organized
under the laws of Texas with a principal place of business and registered agent address at 6550
Shady Brook Ln, Apt. 1420, Dallas, TX 75206. ChiroDesign Group, LLC markets and sells a
line of spinal orthotic devices known as “LifeCurve Rolls,” which are the accused
instrumentalities in this case, including via its website at www.chirodesigngroup.com.
4.
Defendant Marie L. Webster (“Defendant Webster”) is an individual having a
principal residence at 6550 Shady Brook Ln, Apt. 1420, Dallas, TX 75206. Defendant Webster
is the owner, director and registered agent of ChiroDesign Group, LLC. Defendant Webster,
individually and doing business as ChiroDesign Group, markets and sells the accused LifeCurve
Rolls, including via her website at www.chirodesigngroup.com.
5.
On or about August 1, 2014, the charter for ChiroDesign Group, LLC was
forfeited by the Texas Secretary of State pursuant to Section 171.309 of the Texas Tax Code.
Because Denneroll’s cause of action arose before the forfeiture, affirmative relief may not be
granted to ChiroDesign Group, LLC unless its corporate privileges are revived. TEX. TAX CODE
ANN. § 171.253 (2015).
6.
Because the corporate privileges of ChiroDesign Group, LLC were forfeited
under Subchapter F of Chapter 171 of the Texas Tax Code, ChiroDesign Group, LLC cannot sue
or defend in this Court. TEX. TAX CODE ANN. § 171.252 (2015).
7.
Because the corporate privileges of ChiroDesign Group, LLC were forfeited
under Subchapter F of Chapter 171 of the Texas Tax Code, Ms. Webster and all other directors
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and officers of ChiroDesign Group, LLC are liable for the debts of ChiroDesign Group, LLC as
provided by Section 171.255 of the Texas Tax Code. TEX. TAX CODE ANN. § 171.252 (2015).
II.
JURISDICTION AND VENUE
8.
This is an action for patent infringement arising under the patent laws of the
United States, Title 35 of the United States Code (the “Patent Act”), and for false advertising
arising under the unfair competition laws of the United States, § 43 of the Lanham Act, 15
U.S.C. § 1125(a).
9.
This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
§§ 1331, 1338.
10. The Court has personal jurisdiction over the parties, and venue is proper in this
District pursuant to 28 U.S.C. §§ 1391, 1400, because Defendants are residents of Texas and
Defendants are conducting business on a systematic and continuous basis within this judicial
District, and have committed acts of infringement and unfair competition in this judicial
District, including by advertising and selling LifeCurve Rolls in and into this District.
Defendants have committed acts of infringement in this judicial District by offering to sell and
selling LifeCurve Rolls in this District, including via their website.
Defendants have
committed acts of unfair competition in this judicial District by advertising LifeCurve Rolls
unlawfully in this District, including via their website. Thus, a substantial part of the events
and omissions giving rise to Denneroll’s claims occurred in this District, and this Court’s
assertion of personal jurisdiction over Defendants would not offend traditional notions of fair
play and substantial justice.
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11. Venue is proper in this District because the Defendants are subject to personal
jurisdiction in this District. See, e.g., Versata Software, Inc. v. Internet Brands, Inc., No. 2:08cv-313, 2009 WL 3161370, at *2 (E.D. Tex. Sept. 30, 2009) (citing Trintec Indus., Inc. v.
Pedre Promotional Prods., Inc., 395 F.3d 1275, 1280 (Fed. Cir. 2005)).
III.
FACTUAL BACKGROUND
Plaintiffs Denneroll Holdings and Denneroll Industries
12. Denneroll is in the business of marketing and selling a line of products for
effective spinal health care. Denneroll’s products are sold in numerous countries around the
world, including the United States, Australia, New Zealand and the United Kingdom, and are
purchased by chiropractors, patients and others for use in connection with the prevention and
treatment of poor spinal health.
13. One of Denneroll’s products is known commercially as the Cervical Denneroll
device, which is available in different sizes (large, medium and small) as shown in the below
image:
Plaintiffs’ Cervical Denneroll orthotic devices
14. The Cervical Denneroll products are cervical orthotic devices for relieving pain
and muscle tension associated with abnormal curvature of a person’s neck, or abnormal Cervical
Lordosis.
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15. The Cervical Denneroll orthotic devices can be used for treating various portions
of a person’s neck and are placed between the neck and an underlying surface during use, as
demonstrated in the below image:
Plaintiffs’ Cervical Denneroll orthotic devices during use
16. The Cervical Denneroll was invented by Dr. Adrian Dennewald and is the subject
of U.S. Patent No. 8,713,732 entitled “Orthotic Device” (the “’732 patent”).
17. Denneroll Holdings is the owner by assignment of all rights, title, and interest in
and to the ‘732 patent, which was duly and legally issued on May 6, 2014 by the United States
Patent and Trademark Office. A true and correct copy of the ’732 patent is attached hereto as
Exhibit A. The ‘732 patent is valid and subsisting.
18. Denneroll Industries is the exclusive licensee of Denneroll Holdings under the
‘732 patent and has the exclusive rights to make, use, offer to sell and sell within the United
States, and to import into the United States, the patented invention of the ‘732 patent.
19. Denneroll has never granted any rights under the ‘732 patent to any of
Defendants.
Defendants and Their Willful Infringement of the ‘732 Patent
20. Defendants are in the business of selling products and services for chiropractors
and their patients.
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21. In January 2010, Defendant Webster attended a chiropractic conference in Las
Vegas, Nevada known as Parker Seminars (the “Seminar”).
22. During the Seminar, Defendant Webster learned of Plaintiffs’ Cervical Denneroll
orthotic devices and physically held a Cervical Denneroll device in her hand.
Defendant
Webster was told that a patent application for the Cervical Denneroll device had been filed and
that the application was pending at that time.
23. Subsequently to the Seminar, Defendants copied the Cervical Denneroll device.
24. Subsequently to the Seminar, Defendants made or had made copies of the
Cervical Denneroll device and began offering for sale and selling those copies in the United
States and this judicial District, including by way of their website www.chirodesigngroup.com.
A true and correct copy of Defendants’ catalogue currently available for download on their
website, including from within this judicial District, is attached hereto as Exhibit B.
25. Defendants offer for sale and sell products they refer to as “LifeCurve Rolls” in
this judicial District and elsewhere within the United States.
Defendants’ LifeCurve Roll
products are orthotic devices that directly compete with Denneroll’s Cervical Denneroll devices.
26. The image below shows an advertisement for Defendants’ LifeCurve Rolls from
their catalogue (see Ex. B at 12) ; however, the device shown in the advertisement is not one of
Defendants’ LifeCurve Rolls.
Rather, the device shown in the advertisement is one of
Denneroll’s Cervical Denneroll devices and was used without permission from Denneroll.
[image follows]
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Defendants’ catalogue advertisement that falsely represents one of Denneroll’s
Cervical Denneroll devices as one of Defendants’ infringing LifeCurve Rolls
27. Defendants have used, and are using, an image of Denneroll’s product in
commercial advertising and promotion for their LifeCurve Rolls. In doing so, Defendants have
falsely held Denneroll’s product out as one of their own. Defendants’ use of Denneroll’s product
in their advertising has been, and is, knowing and willful.
28. The image below shows an advertisement for Defendants’ LifeCurve Rolls on
their website www.chirodesigngroup.com:
Internet advertisement for Defendents’ infringing LifeCurve Rolls
29. Defendants’ LifeCurve Rolls are available in two sizes – “large” and “small.”
Defendants’ large LifeCurve Roll has similar dimensions to Denneroll’s large Cervical
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Denneroll and Defendants’ small LifeCurve Roll has similar dimensions to Denneroll’s medium
Cervical Denneroll.
30. Defendants’ LifeCurve Rolls are made in the United States.
31. Defendants’ LifeCurve Rolls are imported into the United States.
32. Defendants have used, offered for sale and sold within the United States, and
continue to use, offer for sale and sell within the United States, orthotic devices that infringe one
or more claims of the ’732 patent, including Defendants’ large and small LifeCurve Roll
products.
33. Defendants had actual notice of the ‘732 patent at least as early as August 18,
2014. Since that time, Defendants have offered for sale and sold within the United States
orthotic devices that infringe one or more claims of the ’732 patent, including Defendants’ large
and small LifeCurve Roll products.
34. Defendants had actual notice of their alleged infringement of the ‘732 patent at
least as early as August 18, 2014. Since that time, Defendants have offered for sale and sold
within the United States orthotic devices that infringe one or more claims of the ’732 patent,
including Defendants’ large and small LifeCurve Roll products.
IV.
FIRST COUNT – DIRECT INFRINGEMENT OF THE ’732 PATENT
35. The allegations of all preceding Paragraphs are re-alleged and incorporated by
reference as if set forth fully herein.
36. Defendants have infringed one or more claims of the ’732 patent by at least one of
making, using, offering to sell, and selling within the United States Defendants’ large and small
LifeCurve Roll products. Such conduct by Defendants is without Denneroll’s consent.
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37. To the extent Defendants’ large and small LifeCurve Roll products are made
outside of the United States, Defendants have infringed one or more claims of the ’732 patent by
importing into the United States Defendants’ large and small LifeCurve Roll products. Such
conduct by Defendants is without Denneroll’s consent.
38. Defendants’ conduct complained of herein constitutes direct patent infringement,
such infringement being literal and/or under the doctrine of equivalents, in violation of 35 U.S.C.
§ 271(a). Defendants’ infringement is knowing and willful.
39. As a direct and proximate result of Defendants’ infringement of the ‘732 patent,
Denneroll has been and continues to be irreparably harmed, and has suffered and continues to
suffer damages.
Denneroll is entitled to recover damages adequate to compensate it for
Defendants’ infringement in an amount to be determined at trial.
40. Denneroll will continue to be harmed and damaged by Defendants’ infringement
of the ‘732 patent until Defendants are enjoined from such infringement by the Court.
V.
SECOND COUNT – FEDERAL UNFAIR COMPETITION
41. The allegations of all preceding Paragraphs are re-alleged and incorporated by
reference as if set forth fully herein.
42. Without permission from Denneroll, Defendants have used, and are using, an
image of Denneroll’s product in interstate commercial advertising and promotion for their
LifeCurve Rolls, including in their catalogue attached hereto as Exhibit B.
In doing so,
Defendants have falsely represented Denneroll’s product as a product of Defendants and have
falsely represented to consumers that Defendants are selling Denneroll’s products.
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43. Such representations by Defendants constitute statements of fact that are literally
false and which are likely to mislead and confuse consumers. Defendants’ statements have the
capacity to deceive, and have deceived, a substantial segment of consumers and potential
consumers, and are material in that they are likely to influence a consumer’s purchasing decision
based on the catalogue.
44. Defendants’ use of Denneroll’s product in their advertising has been, and is,
knowing and willful. Since the time Defendants’ first included an image of Denneroll’s product
in their catalogue, Defendants have known that such image is an image of Denneroll’s product
and not an image of Defendants’ product.
45. Defendants’ conduct complained of herein constitutes false advertising in
violation of 15 U.S.C. § 1125(a).
46. Defendants’ use of a photograph of Denneroll’s product to trade upon the
reputation of Denneroll and to confuse potential consumers as to the source of origin of the
product pictured in Defendants’ catalogue constitutes false advertising in violation of 15 U.S.C.
§ 1125(a).
47. As a direct and proximate result of Defendants’ false advertising, Denneroll has
been and continues to be irreparably harmed, and has suffered and continues to suffer damages.
Denneroll is entitled to recover its damages sustained because of, and Defendants’ profits
attributable to, Defendants’ false advertising in amounts to be determined at trial.
48. Denneroll will continue to be harmed and damaged by Defendants’ false
advertising until Defendants are enjoined from such behavior by the Court.
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DEMAND FOR JURY
49. Denneroll demands a jury trial of all issues in this action so triable pursuant to
Rule 38 of the Federal Rules of Civil Procedure.
PRAYER
50. For these reasons, Denneroll prays for judgment against Defendants and requests
that the Court:
(a)
Renders judgment that Defendants have infringed the ’732 patent;
(b)
Renders judgment that Defendants’ infringement of the ’732 patent is willful;
(c)
Renders judgment that Defendants have committed acts of unfair competition in
violation of 15 U.S.C. § 1125(a).
(d)
Issues preliminary and permanent injunctions restraining Defendants, and those in
active concert or participation with any of them, from further infringement of the ’732
patent and from further unfair competition;
(e)
Awards compensatory damages in an amount to be determined at trial;
(f)
Orders an accounting of Defendants’ sales of and profits from their LifeCurve
Rolls;
(g)
Awards Defendants’ profits attributable to their unfair competition;
(h)
Awards treble damages pursuant to 35 U.S.C. § 284 and 15 U.S.C. § 1117(a);
(i)
Awards Denneroll’s full costs of this action;
(j)
Awards pre-judgment and post-judgment interest as allowed by law;
(k)
Declares this case exceptional and awards reasonable attorney fees to Denneroll
pursuant to 35 U.S.C. § 285 and 15 U.S.C. § 1117(a); and
(l)
Awards all other relief, in law or in equity, to which Denneroll may be entitled.
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DATED this 20th day of March, 2015.
Respectfully submitted,
/s/ D. Brit Nelson
________
D. Brit Nelson
Attorney-in-Charge
Texas State Bar No. 14888660
S.D. No. 23680
[email protected]
Cole Mackey (of counsel)
Texas State Bar No. 24062865
S.D. No. 963664
[email protected]
LOCKE LORD LLP
600 Travis Street, Suite 2800
Houston, Texas 77002
Telephone:
713-226-1200
Facsimile:
713-223-3717
Attorneys for Plaintiffs
Denneroll Holdings Pty Limited and Denneroll
Industries International Pty Limited
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