Misty Mate v. Home Depot et. al.

8/12/2019 Misty Mate v. Home Depot et. al.

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H Y M S O NG O L D S T E I N&P A N T I L I A T ,PLLC

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JURISDICTION AND VENUE

5. This action arises from two claims for relief for patent infringement and one

claim for relief for trade dress infringement; all claims for relief arise under federal law. The

patent claims arise under the United States Patent laws, 35 U.S.C. 271, and the trade dress

claim arises under the Lanham Act 43(a), 15 U.S.C. 1125(a), thus, this Court has subject

matter jurisdiction pursuant to 28 U.S.C. 1331 and 1338. The Court further has subject

matter jurisdiction under 28 U.S.C. 1332 as there is complete diversity of citizenship

between plaintiff and defendants.

6. This Court has specific personal jurisdiction over The Home Depot, Inc., Home

Depot U.S.A., Inc. and One World because the acts which constitute the instant causes ofaction patent infringement and trade dress infringement - were committed in Arizona and

directed at residents of Arizona.

7. This Court has general personal jurisdiction over The Home Depot, Inc. and

Home Depot U.S.A., Inc., because they regularly and systematically conduct business in

Arizona, including but not limited to maintaining retail stores in Arizona, and thus have

purposefully availed themselves of the privilege of conducting business in Arizona.

8. This Court has general personal jurisdiction over One World because, upon

information and belief, it has and continues to regularly and systematically conduct business

in Arizona, including shipping products into Arizona or into the stream of commerce

knowing the products would be sold and used in Arizona, and thus has purposefully availed

itself of the privilege of conducting business in this State.

9. Venue is proper in this District under 28 U.S.C. 1391 and 1400(b).

BACKGROUND FACTS

10. Misty Mate, headquartered in Tempe, Arizona, manufactures and sells a wide

range of personal cooling products, including personal misters, misting systems and cooling

apparel.

11. Misty Mate invented the first pressure-operated personal mister in 1989 and has

since provided, throughout the United States and internationally, millions of innovative,


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handheld and easy-to-use personal misters that cool the air up to 30F.

12. Misty Mate currently sells a Pro Series line of personal misters including the

Misty 8, Misty 16, and Misty 24 (collectively the Misty Mate Pro Series Misters).

13. Each Misty Mate Pro Series Mister includes a hand operated pump/carry handle,

a custom pressure gauge, a water reservoir, a pressure regulator and a nozzle.

14. On December 6, 2011, after a full and extensive examination, the United States

Patent and Trademark Office (PTO) duly and legally issued United States Patent Number

8,070,140 (the 140 Patent). A true and correct copy of the 140 Patent is attached as

Exhibit A.

15. On August 9, 2011, after a full and extensive examination, the PTO duly andlegally issued United States Patent Number D643,092 (the 092 Patent). A true and

correct copy of the 092 Patent is attached as Exhibit B.

16. Misty Mate owns all the right, title and interest to the 140 Patent and 092

Patent (collectively, the Patents) and has been dutifully marking its products with the

Patents numbers in accordance with 35 U.S.C. 287.

17. In 2013, Home Depot purchased assorted Misty Mate products for test

marketing in dozens of Home Depot locations throughout the United States.

18. At the conclusion of the test marketing, representatives of Misty Mate and

Home Depot met to discuss furthering purchases by Home Depot.

19. On August 19, 2013, Misty Mate advised Home Depots representatives, in

writing, that the Misty Mate Pro Series Misters were covered by several United States

Patents, and attached copies of the Patents to that email.

20. In fact, Home Depot had previously been selling a misting product

manufactured by Orbit Irrigation Products, Inc. (Orbit) that was alleged to have infringed

the Patents.

21. Orbit had ceased selling the accused product to Home Depot in 2013.

22. Home Depot acknowledged Misty Mates email informing Home Depot of

those Patents.


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23. Early in 2014, Home Depot began selling another misting product that infringed

the Patents sold under the trade name Arctic Cove. Arctic Cove is not affiliated whatsoever

with Misty Mate.

24. Upon information and belief, The Arctic Cove personal misters were sold to

Home Depot by One World.

COUNT I INFRINGEMENT OF THE 140 PATENT

25. Misty Mate re-alleges and incorporates by reference paragraphs 1-23, inclusive,

of this Complaint as though fully set forth herein.

26. In violation of 35 U.S.C. 271, Home Depot and One World (collectively,

Defendants) have infringed and continue to infringe the 140 Patent by making, using,selling, or offering to sell the Arctic Cove personal misters.

27. In further violation of 35 U.S.C. 271, Defendants further infringe the 140

Patent by contributing to and/or actively inducing the infringement by others of the 140

Patent by the manufacture, use, sale, offering for sale, and/or importation or exportation of

Defendants Arctic Cove personal misters.

28. On August 19, 2013, Misty Mate informed Home Depot of the 140 Patent and

Home Depot acknowledged receipt of the email informing it of the 140 Patent. Because

Home Depot purchased and resold the infringing Arctic Cove personal misters after

receiving that notice, Home Depot has willfully infringed the 140 Patent.

29. As a result of the infringement of the 140 Patent, Misty Mate has been

damaged and is entitled to be compensated for its damages, pursuant to 35 U.S.C. 284 in an

amount to be determined at trial.

30. Misty Mate has suffered irreparable harm as a result of Defendants

infringement of the 140 Patent.

31. Unless Defendants are enjoined by this Court from continuing their

infringement of the 140 Patent, Misty Mate will continue to suffer irreparable harm and

impairment of the value of its patent rights. Thus, Misty Mate is entitled to a permanent

injunction against further infringement.


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32. Because Defendants past and continuing infringement of the 140 Patent has

been deliberate and willful, their conduct warrants an award of treble damages, pursuant to

35 U.S.C. 284.

33. This is an exceptional case justifying an award of attorney fees to Misty Mate,

pursuant to 35 U.S.C. 285.

COUNT II INFRINGEMENT OF THE 092 PATENT

34. Misty Mate re-alleges and incorporates by reference paragraphs 1-32, inclusive,

of this Complaint as though fully set forth herein.

35. Defendants have infringed and are continuing to infringe the 092 Patent by

making, using, selling, offering for sale, and/or importing/exporting personal misters inviolation of 35 U.S.C. 271.

36. On August 19, 2013, Misty Mate informed Home Depot of the 092 Patent and

Home Depot acknowledged receipt of the email informing it of the 092 Patent. Because

Home Depot purchased and resold the infringing personal Arctic Cove misters after

receiving such notice, Home Depot has willfully infringed the 092 Patent.

37. As a direct and proximate result of Defendants infringement of the 092 Patent,

Misty Mate has suffered and will suffer monetary damages and Misty Mate is entitled to

recover from Defendants the damages sustained in an amount to be determined at trial.

38. Defendants infringement of the 092 Patent has been willful.

39. Defendants acts of willful infringement of the 092 Patent will continue unless

enjoined by the Court.

40. Misty Mate has suffered irreparable harm as a result of Defendants willful

infringement of the 092 Patent.

41. Unless Defendants are enjoined by this Court from continuing their willful

infringement of the 092 Patent, Misty Mate will suffer additional irreparable harm and

impairment of the value of its patent rights. Thus, Misty Mate is entitled to a permanent

injunction against further infringement.


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42. Since Defendants past and continuing infringement of the 092 Patent has been

deliberate and willful, their conduct warrants an award of treble damages, pursuant to 35

U.S.C. 284.

43. This is an exceptional case justifying an award of attorney fees to Misty Mate,

pursuant to 35 U.S.C. 285.

COUNT III TRADE DRESS INFRINGEMENT

44. Misty Mate hereby realleges and incorporates by reference paragraphs 1-42,

inclusive, of this Complaint as though fully set forth herein.

45. Misty Mate owns the protectable and distinctive product packaging trade dress

for the Misty 16-ounce personal mister (Misty 16).46. Home Depot and One Worlds Arctic Cove personal mister infringes Misty

Mates protected trade dress packaging under the Lanham Act 43(a), 15 U.S.C. 1125(a).

47. Misty Mate has continuously and exclusively been using its packaging trade

dress which includes a generally rectangular clear plastic shell with a curved top portion, a

hang hole on the top of the plastic shell, the plastic shell having a three-dimensional

triangular bottom portion, with the mister placed on the left side of the plastic shell, an insert

surrounding the top and right side of the mister, the insert having a picture of a person using

the misting product, the insert of the Misty 16 referring to the product as a 16-oz personal

mister, and the use of varying shades of the color blue and other graphical content associated

with the Misty 16.

48. The Defendants Arctic Cove mister packaging is nearly identical in size and

shape to Misty-Mates Misty 16 packaging. Upon information and belief, the Defendants

Arctic Cove mister is packaged to be substantially similar to Misty Mates distinctive

packaging in order to trade on the extensive goodwill established therein.

49. Misty Mates continuous use of its distinctive packaging has resulted in the

trade dress obtaining secondary meaning by serving as a distinctive source-indicator of high-

quality personal misting products from a single source. Misty Mates trade dress has

acquired secondary meaning, as it is utilized by purchasers and distributors alike to identify


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and distinguish Misty Mates Misty 16 mister from others manufactured by competitors.

Moreover, Misty Mates distinctive trade dress packaging is utilized by its purchasers as an

indication of Misty Mates valuable goodwill and quality craftsmanship.

50. By reason of Defendants collective acts alleged herein, Defendants falsely

represent that Defendants are somehow affiliated with, or sponsored or endorsed by, Misty

Mate; Defendants dilute the goodwill in the Misty Mate Misty 16 trade dress; and

Defendants conduct is therefore likely to confuse, mislead, or deceive purchasers as to the

source, sponsorship or affiliation of its mister.

51. Defendants Arctic Cove 16-oz personal mister packaging is a colorable

imitation of Misty Mates Misty 16 distinctive packaging trade dress.52. Defendants Arctic Cove packaging Infringes Misty Mates protected trade

dress under the Lanham Act 43(a), 15 U.S.C. 1125(a).

53. Defendants use of Misty Mates trade dress packaging consists of trade dress

infringement, unfair competition and false designation of origin.

54. By reason of Defendants collective acts alleged herein, Misty Mate has

suffered and continues to suffer damage to its business, reputation, and goodwill, together

with the loss of sales and profits Misty Mate would have made but for Defendants acts, in

an amount to be proven at trial.

55. By reason of Defendants acts alleged herein, Misty Mate has suffered and

continues to suffer irreparable damage. Unless Defendants are restrained, the damage and

irreparable harm to Misty Mate will increase. Misty Mate has no adequate remedy at law.

Misty Mate is entitled to preliminary and permanent injunctive relief.

PRAYER FOR RELIEF

Wherefore, upon final hearing or trial, plaintiff Misty Mate respectfully requests the

following relief:

a) judgment that Home Depot and One World Technologies have infringed U.S. Patent

Nos. 8,070,140 and D643,092;


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b) judgment and order requiring Home Depot and One World Technologies to pay

damages to Misty Mate adequate to compensate it for their wrongful infringing acts,

in accordance with 35 U.S.C. 284 and 289;

c) judgment requiring Home Depot and One World Technologies to pay increased

damages up to three times for its willful and deliberate infringement of the 140 and

092 Patents;

d) judgment that this is an exceptional patent case, under 35 U.S.C. 285, and an award

to Misty Mate for its costs, including its reasonable attorney fees and other expenses

incurred in connection with this action;

e) judgment that Home Depot and One World Technologies infringe Misty Mates

trade dress;

f) judgment that Home Depot and One World Technologies actions consist of unfair

competition and false designation of origin;

g) judgment that Home Depot and One World Technologies Home Depot and OneWorld Technologies actions related to the trade dress have been willful;

h) judgment requiring Home Depot and One World Technologies to account for and to

pay Misty Mate all profits derived from Home Depot and One World Technologies

wrongful conduct;

i) judgment awarding compensatory damages for the injuries sustained as a result of

the acts complained of herein;

j) judgment awarding enhanced damages and profits for Home Depot and One World

Technologies willful infringement as provided in 15 U.S.C. 1117 and punitive

damages as provided under Arizona common law;


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k) judgment requiring Home Depot and One World Technologies to pay Misty Mate

prejudgment interest;

l)

Misty Mate be awarded its attorney fees and costs pursuant to 15 U.S.C. 1117 and35 U.S.C. 285; and

m) such additional relief the Court deems fair and just.

RESPECTFULLY SUBMITTED this 11th day of July, 2014

By: /s/ David B. GoldsteinDavid B. Goldstein

[email protected] Goldstein & Pantiliat, PLLC16427 N. Scottsdale Road, Suite 300Scottsdale, AZ 85254(480) 991-9077

Mark M. Grossman ( pro hac vice to be submitted)[email protected]

Nicolas Spear ( pro hac vice to be submitted)[email protected]

Kyle D. Wallenberg ( pro hac vice to be submitted)Grossman Law Offices309 W. Washington Street, Suite 700Chicago, Illinois 60606(312) 621-9000
mailto:[email protected]:[email protected]:[email protected]:[email protected]


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JURY DEMAND

Misty Mate requests a trial by jury under Rule 38 of the Federal Rules of Civil

Procedure as to all issues in this lawsuit of which trial by jury is permitted.

Respectfully Submitted,

MISTY MATE, INC.

Date: July 11, 2014 By:/s/ David B GoldsteinDavid B. [email protected] Goldstein & Pantiliat, PLLC16427 N. Scottsdale Road, Suite 300Scottsdale, AZ 85254(480) 991-9077

Mark M. Grossman ( pro hac vice to be submitted)[email protected]

Nicolas Spear ( pro hac vice to be submitted)[email protected] D. Wallenberg ( pro hac vice to be submitted)[email protected] Law Offices309 W. Washington Street, Suite 700Chicago, Illinois 60606(312) 621-9000
mailto:[email protected]:[email protected]:[email protected]:[email protected]


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EXHIBIT A


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EXHIBIT B


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Misty Mate v. Home Depot et. al.

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Transcript of Misty Mate v. Home Depot et. al.