UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION FAMOUS DISTRIBUTION, INC.

d/b/a FAMOUS SUPPLY CO. OF CLEVELAND, FAMOUS SUPPLY CO. OF UNIONTOWN, FAMOUS SUPPLY CO. OF WASHINGTON, and FAMOUS INDUSTRIES, INC. d/b/a HEATING & COOLING PRODUCTS COMPANY, Plaintiffs, v. DUCTMATE INDUSTRIES, INC. Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) )

No. _______________

JURY TRIAL DEMANDED

COMPLAINT FOR DECLARATORY JUDGMENT Plaintiffs Famous Distribution, Inc. d/b/a Famous Supply Co. of Cleveland, Famous Supply Co. of Uniontown, Famous Supply Co. of Washington and Famous Industries, Inc. d/b/a Heating and Cooling Products Company (collectively, Plaintiffs), through their undersigned counsel, file this Complaint for Declaratory Judgment (Complaint) against Ductmate Industries, Inc. (Defendant or Ductmate) as follows:

NATURE OF ACTION 1. This is an action for declaratory judgment seeking relief of non-infringement

under the patent laws of the United States, Title 35, United States Code, the Declaratory Judgment Act, 28 U.S.C. 2201 and 2202, and Fed. R. Civ. P. 57.

US_ACTIVE-115885641.5-MPFREDER 01/20/2014 1:44 PM

PARTIES 2. Famous Distribution, Inc. is an Ohio corporation having an address at 109 North

Union Street, Akron, OH 44304. 3. Famous Industries, Inc. is an Ohio corporation having an address at 109 North

Union Street, Akron, OH 44304. 4. Ductmate is a corporation having a place of business at 210 Fifth Street,

Charleroi, PA 15022.

JURISDICTION AND VENUE 5. The declaratory judgment claim arises under the patent laws of the United States,

35 U.S.C. 100, et. seq., and the Declaratory Judgment Act, 28 U.S.C. 2201 and 2202. This Court has subject matter jurisdiction over the claims pursuant to 28 U.S.C. 1331, 1338(a), 2201(a), and 2202. This matter presents an actual case or controversy and serves the purpose of resolving the legal rights of the parties. 6. This Court has personal jurisdiction over Ductmate because Ductmate has

maintained continuous and systematic contacts with the State of Ohio, regularly conducts and solicits business in this judicial district, and has purposefully availed itself of the benefits and protections of the laws of the State of Ohio. 7. Upon information and belief, Ductmate, directly and/or through its distribution

networks, offers for sale, sells, and/or distributes products within the State of Ohio.

8.

Upon information and belief, Ductmate engages distributors within the State of

Ohio to distribute, offer for sale, and/or sell its products. See Exhibit A, a printout from Ductmates website showing seven Ductmate distributor locations in Ohio. Several of the Ductmate distributors (Ferguson, Decker Steel & Supply, and Carr Supply) have offices located in or near Akron and Cleveland, Ohio (in the Northern District of Ohio). 9. Venue is proper in this judicial district under 28 U.S.C. 1391 to the extent that a

substantial part of the events that give rise to this declaratory judgment action occurred in this judicial district.

FACTUAL BACKGROUND 10. Upon information and belief, Ductmate is the record owner of U.S. Patent No.

7,992,904 titled Sealing Mechanism for Ductwork (904 patent). A true and correct copy of the 904 patent is attached as Exhibit B. 11. Upon information and belief, Ductmate is the record owner of U.S. Patent No.

8,429,803 titled Dual Purpose Dimple for HVAC Circular Ductwork (803 patent) (collectively, the 803 patent and the 904 patent hereinafter referred to as the Transverse Patents). A true and correct copy of the 803 patent is attached as Exhibit C. 12. Ductmate and the Plaintiffs are currently engaged in litigation in the Western In the

District of Pennsylvania, Civil Action no. 2:12-cv-1440 (Pennsylvania Action).

Pennsylvania litigation, Ductmate sued the Plaintiffs for patent infringement of U.S. Patent No. 7,478,467 (467 patent), U.S. Patent No. 7,708,034 (034 patent), U.S. Patent No. 8,151,430 3

(430 patent), and U.S. Patent No. 8,505,185 (185 patent) (collectivel y, hereinafter referred to as the Longitudinal Patents). In the Pennsylvania Action, Ductmate alleges that a circular duct product (UltraSeal) manufactured and/or sold by the Plaintiffs, and incorporating a seal on the longitudinal seam, infringes the Longitudinal Patents. 13. On or about January 20, 2014, Plaintiffs commercially released a new circular This

duct product which incorporates a new transverse seam technology (See Exhibit D).

transverse seam technology is wholly distinct and different than the longitudinal seam technology at issue in the Pennsylvania Action, and is not at issue in the Pennsylvania Action. Ductmate, however, has asserted that in order to market any new transverse seam technology, Famous would need a license from Ductmate and/or pay Ductmate royalties pursuant to the Transverse Patents. Because of Ductmates contention that a license would be necessary for a circular duct product with a seal on the transverse seam, an actual controversy therefore exists between Ductmate and Plaintiffs with regard to Plaintiffs newly released product. 14. Additionally, Ductmate is litigious and has brought a number of lawsuits against

different entities, alleging infringement of its duct-related patents. Indeed, in addition to the patents asserted against Plaintiffs in the Pennsylvania Action, Ductmate has previously sued Plaintiffs for patent infringement in this district relating to flange type duct products. See Ductmate Industries, Inc. v. Famous Supply Corporation et al., Civ. Act. No. 5.98 CV 2341 (N.D. OH 1998). 15. Given Ductmates history of litigation, the fact that it has twice already sued

Plaintiffs on other duct products, and Ductmates statements that a license would be required for

any new transverse seam technology released by Plaintiffs, it is clear to Plaintiffs that Ductmate will pursue patent litigation against Plaintiffs on their new transverse seam product. 16. Ductmate has taken a position regarding the Transverse Patents that puts Famous

in the position of either pursuing arguably patent-infringing behavior or abandoning that which it claims a right to do.

COUNT I: DECLARATORY JUDGMENT OF NON-INFRINGEMENT 17. 18. Plaintiffs incorporate the preceding paragraphs as if fully set forth herein. Plaintiffs have not directly infringed, and do not directly infringe, any claim of the

904 and 803 patents. 19. Plaintiffs have not jointly infringed, and do not currently jointly infringe, any

claim of the 904 and 803 patents. 20. Plaintiffs have not contributorily infringed, and do not currently contributorily

infringe, any claim of the 904 and 803 patents. 21. Plaintiffs have not induced, and do not currently induce, any infringement of any

claim of the 904 and 803 patents. 22. Plaintiffs are entitled to a declaration pursuant to 28 U.S.C. 2201 and 2202 that

the Plaintiffs do not infringe any claim of the 904 and 803 patents.

PRAYER FOR RELIEF WHEREFORE, Plaintiffs respectfully request that this Court enter judgment in its favor as follows: a) declare that Plaintiffs have not directly infringed, and do not currently directly infringe, any claim of the 904 and 803 patents; b) declare that Plaintiffs have not jointly infringed, and do not currently jointly infringe, any claim of the 904 and 803 patents; c) declare that Plaintiffs have not contributorily infringed, and do not currently contributorily infringe, any claim of the 904 and 803 patents; d) declare that Plaintiffs have not induced, and do not currently induce, any infringement of any claim of the 904 and 803 patents; e) declare this to be an exceptional case and award Plaintiffs its cost, expenses, and disbursements in this action, including reasonable attorney fees, pursuant to 35 U.S.C. 285; and f) award Plaintiffs any further and additional relief that this Court deems just and proper.

DEMAND FOR JURY TRIAL Pursuant to Fed. R. Civ. P. 38, Plaintiffs demand a jury trial on all issues triable to a jury.

Respectfully submitted, Dated: January 20, 2014 /s/ Mark R. Koberna Mark R. Koberna OH ID No. 0038985 mkoberna@sonkinkoberna.com Sonkin and Koberna, LLC 3401 Enterprise Parkway, Suite 400 Cleveland, Ohio 44122 Tel.: (216) 514-8300 Fax: (216) 514-4467 /s/ David J. Michalski David J. Michalski OH ID No. 0063802 dmichalski@sonkinkoberna.com Sonkin and Koberna, LLC 3401 Enterprise Parkway, Suite 400 Cleveland, Ohio 44122 Tel.: (216) 514-8300 Fax: (216) 514-4467 Counsel for Plaintiffs Of Counsel: Kirsten R. Rydstrom PA ID No. 76549 krydstrom@reedsmith.com REED SMITH LLP 225 Fifth Avenue Suite 1200 Pittsburgh, PA 15222 Tel.: (412) 288-3131 Fax: (412) 288-3063 Matthew P. Frederick PA ID No. 203994 mfrederick@reedsmith.com REED SMITH LLP 2500 One Liberty Place 1650 Market Street Philadelphia, PA 19103-7301 Phone: (215) 851-8100 Fax: (215) 851-1420