Runberg v. Victoria's Secret - Complaint

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 1 of 26
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
____________________________________
:
:
:
Plaintiff,
:
:
v.
:
:
VICTORIAS SECRET STORES, INC.,
:
VICTORIAS SECRET STORES LLC,
:
VICTORIAS SECRET STORES
:
BRAND MANAGEMENT, INC., :
VICTORIAS SECRET DIRECT LLC,
:
LIMITED BRANDS, INC., and
:
SUPPLIER JOHN DOE 1,
:
:
:
:
Defendants.
:
____________________________________:
RUNBERG, INC. d/b/a ZEPHYRS,
______ CIV. _______
JURY TRIAL DEMANDED
COMPLAINT
PLAINTIFF RUNBERG, INC. D/B/A ZEPHYRS (Zephyrs or the Plaintiff), by its
counsel the GIOCONDA LAW GROUP PLLC hereby complains and alleges against DEFENDANTS
VICTORIAS SECRET STORES, INC., VICTORIAS SECRET STORES LLC, VICTORIAS
SECRET STORES BRAND MANAGEMENT, INC., VICTORIAS SECRET DIRECT LLC,
LIMITED BRANDS, INC. (collectively, the Victorias Secret Defendants), and SUPPLIER
JOHN DOE 1 (Supplier John Doe 1), as follows:
NATURE OF THE ACTION AND PATENTS-IN-SUIT

1.
This lawsuit is an action for patent infringement arising under the patent laws of
the United States, 35 U.S.C. 1 et seq., seeking preliminary and permanent injunctive relief,
monetary damages, attorneys fees and costs for the Defendants willful patent infringement in
violation of U.S. Utility Patent No. RE45838E. This lawsuit also seeks damages for the
Defendants willful patent infringement in violation of U.S. Utility Patent No. 8,216,021 B1
(attached hereto as Exhibits 1 and 2, respectively) (hereinafter, Zephyrs Patents).
2.
This lawsuit also seeks a Declaratory Judgment and Order directing the United
States Patent and Trademark Office (USPTO) to correct the named inventorship of U.S.
Design Patent No. D655,476 S1 (the VS Push Up Design Patent, attached as Exhibit 3), to
reflect that the proper inventor of the design depicted in the VS Push Up Design Patent is Debra
MacKinnon, the principal of the Plaintiff.
This lawsuit also seeks an Order transferring
ownership of the VS Push Up Design Patent to the Plaintiff.

3.
Furthermore, this lawsuit seeks a Declaratory Judgment and Order transferring
ownership of registered Canadian Industrial Design Patent Reg. No. 136170 (attached hereto
as Exhibit 4) (the VS Canadian Push Up Design Patent) to the Plaintiff.
4.
Finally, this lawsuit seeks monetary damages from the Defendants disgorging the
unjust enrichment that is a result of the erroneous inventorship complained of herein.

PARTIES
5.
PLAINTIFF RUNBERG, INC. D/B/A ZEPHYRS (Zephyrs) is a New York
corporation having its principal place of business at 306 Jersey Avenue, Spring Lake NJ 07762.
Debra MacKinnon has previously assigned all rights, title and interest to Zephyrs Patents to the
Plaintiff.
6.
Upon information and belief, DEFENDANT VICTORIAS SECRET
STORES, INC. is a Delaware corporation with a principal place of business located at Four
Limited Parkway East, Reynoldsburg, Ohio 43068.
7.
Upon information and belief, DEFENDANT VICTORIAS SECRET STORES
LLC is a Delaware limited liability company with a principal place of business located at Four
8.
Upon information and belief, DEFENDANT VICTORIAS SECRET STORES
BRAND MANAGEMENT, INC. is a Delaware corporation with a principal place of business

located at Five Limited Parkway East, Reynoldsburg, Ohio 43068.
9.
Upon information and belief, DEFENDANT VICTORIAS SECRET DIRECT
LLC is a Delaware limited liability company with a principal place of business located at Four
10.
Upon information and belief, DEFENDANT LIMITED BRANDS, INC. is a
Delaware corporation with a principal place of business located at Three Limited Parkway,
Columbus, Ohio 43230. Upon information and belief, Defendant Limited Brands, Inc. is directly
and/or indirectly involved in managing the retail and online business of the other Victorias
Secret Defendants.
11.
Upon information and belief, DEFENDANT SUPPLIER JOHN DOE 1 is an
unnamed, unidentified entity that actively supplies, manufactures and/or distributes the
Victorias Secret Defendants Infringing Products, complained of herein.
JURISDICTION AND VENUE

12.
This is an action for patent infringement arising under the patent laws of the
United States, 35 U.S.C. 271, 1331 and 1338(a). This is also an action for correction of
patent inventorship arising under the patent laws of the United States, 35 U.S.C. 256.
13.
This Court has personal jurisdiction over each of the Defendants as they have
regularly transacted business in New York, regularly done or solicited business in New York,
contracted to supply products in New York, derived substantial revenues from products sold and
used in New York, and/or sold the infringing products in New York or offered the infringing
products for sale in New York and in this Judicial District. Venue in this District is, therefore,
proper under 28 U.S.C. 1391(b) and 1391(c).
RELEVANT FACTUAL BACKGROUND
Zephyrs and the Inventors Background
14.
Debra MacKinnon, the principal of Zephyrs and the inventor (the Inventor) of
the technology at issue here, has many years of experience in the fashion and accessory industry.
15.
Zephyrs is a small, woman-owned company.
16.
Zephyrs is a designer and supplier of high quality intimate apparel, including
womens lingerie, hosiery and fashion accessories such as the Kidney-Shaped Push Up Inserts at
issue in this case.
17.
While visiting the International Lingerie Show in Paris, France on January 24-27,
2008, Ms. MacKinnon first independently conceived the idea of a Kidney Shaped Silicone Push
Up Insert.
18.
Ms. MacKinnons inventive concept was to develop a true anatomically correct
push up insert to create lift and cleavage while maintaining a natural appearance underneath
clothing.
19.
Ms. MacKinnon had discovered that there existed a commercial need for a soft
shaping insert that is anatomically designed to conform and push up the breasts, thereby
increasing volume and cleavage, while providing a natural shape.
20.
Ms. MacKinnon thus invented a novel Kidney-Shaped Push Up Insert that would
embody this unique invention (the Invention, see Figures 1 3 below):
FIG. 1
FIG. 2
5
FIG. 3
21.
At that time, the push up inserts sold in the retail marketplace were fairly generic,
and were sold by many large retailers, such as Wal-Mart and Victorias Secret, at prices ranging
from $20.00 to $58.00 per pair.
22.
Ms. MacKinnons idea was to create a unique product to sell to Victorias Secret,
with whom she already had an established working relationship and was supplying a wide
variety of products.
23.
Upon returning to the United States, at its own expense, Zephyrs commissioned
the services of a sculptor to make a series of plaster molds, to create prototypes of the Kidney
Shaped Push Up Inserts that she had invented.
24.
Prototypes created from these molds were tested on various models by Zephyrs to
determine where best to locate the volume and where to taper the edges.
25.
Over the course of several months, Ms. MacKinnnon laboriously created more
than twenty (20) iterations before finally arriving at the final prototype, each version of which
further reduced the invention to practice.
26.
The final plaster mold was dispatched by Zephyrs to Bridge Chip Company,
Zephyrs Chinese supplier (Bridge Chip) in February 2008 to produce products made of ultra
soft silicone.
27.
On February 13, 2008, Bridge Chip informed Ms. MacKinnon that its factory
would be closed for the Chinese New Year, and would not reopen until February 16, 2008.
28.
Bridge Chip confirmed the earliest time that it could complete producing a sample
would be February 27, 2008, which would have been too late to receive in time for Ms.
MacKinnons planned meeting with the Victorias Secret Defendants in Columbus, Ohio on
March 4, 2008.
29.
On or about March 4, 2008, Ms. MacKinnon met in person with Ms. Heather
Naughton and Ms. Laurie Jeannine Wirgler at Victorias Secrets headquarters in Columbus,
Ohio, and first presented foam mockups of Ms. MacKinnons Invention.
30.
Ms. MacKinnon informed Ms. Naughton and Ms. Wirgler during the March 4,
2008 meeting that prototypes were currently being developed, but that the factory was closed for
the Chinese New Year, and that Zephyrs would later forward a finished rendition.
31.
Ms. MacKinnon again described the concept of her invention in writing to
Victorias Secret on June 11, 2008: This is a true anatomically designed Push Up unlike other
products in the market which create volume only.
32.
Furthermore, Bridge Chip, Zephyrs Chinese factory experienced difficulty in
producing the Kidney Shaped Push Up Inserts according to Zephyrs precise specifications, due
to the nature of the silicone material that is poured into the molds.
33.
Consequently, Zephyrs did not approve the final samples until July 2, 2008.
34.
On July 18, 2008, Zephyrs wrote to Ms. Wirgler that Zephyrs had sent [her] the
only complete set of Engineered Push Ups and our original sample
35.
Attached to that e-mail were files in .PDF form with details for the Engineered
Push Ups.
36.
On July 22, 2008, Ms. Wirgler responded in writing, thanking Zephyrs.
37.
Zephyrs wrote to Victorias Secret on July 25, 2008, informing Victorias Secret
that Zephyrs, through its own outside patent counsel, was preparing to file a provisional patent
application, and that Zephyrs would be happy to offer Victorias Secret an exclusive license for
the lifetime of the product: We have already filed a provision patent application for this item.
We would be happy to offer VS an exclusive domestic license for the lifetime of the product,
however this would require a commitment to patent fees, development costs and minimum order
quantities.
38.
Indeed, on behalf of Zephyrs, the law firm of McDermott, Will & Emery LLP
(McDermott) filed a provisional utility patent application on the original shaping insert design
on July 31, 2008.
39.
Ms. MacKinnon wrote to Victorias Secret making absolutely clear: The
Engineered Push Up is an original concept created by Zephyrs.

40.
Zephyrs and Ms. MacKinnon have always owned the entire right and title to the
Invention.
41.
During all the in-person meetings with Ms. Wirgler and Ms. Naughton in
Columbus, Ohio, Ms. MacKinnon continued to express her belief that the invention was entirely
her own invention and intellectual property, and that Zephyrs was interested in offering an
exclusive license to Victorias Secret for the commercial embodiment of the invention, not
jointly owning any patents on her Invention.
42.
Ms. MacKinnon also informed Victorias Secret that Zephyrs had already retained
its own outside counsel (McDermott) to prosecute a utility patent application, and Zephyrs
provided the provisional patent application to Victorias Secret.
43.
Consequently, Victorias Secret participated in a meeting with its own in-house
and New York patent counsel, and Zephyrs was required to produce all documents pertaining to
Zephyrs independent development of the product, which Zephyrs did in good faith.
44.
During the New York meeting with the Victorias Secrets counsel, neither Ms.
Naughton nor Ms. Wirgler were able to produce documents to Zephyrs or Victorias Secrets
Counsel demonstrating any input from these Victorias Secret employees to the Invention.
45.
In good faith, Zephyrs shared copies of its pending provisional utility patent
application with Victorias Secrets Counsel at that time.

46.
Victorias Secrets Counsel appeared to elect not to pursue the matter further, and
later, Victorias Secret placed significant purchase orders for supply of the product covered by
the Invention.
47.
With Victorias Secrets approval and awareness, Zephyrs invested its own
employees time and its own money in retaining outside counsel to protect Ms. MacKinnons
Invention with a utility patent filed at its own substantial expense.
48.
The Invention claimed in Zephyrs provisional utility patent application (and the
Invention that was later claimed in the 021 Patent) were entirely conceived and reduced to
practice by Ms. MacKinnon as the only properly named Inventor.
49.
This application was duly examined by the USPTO, which ultimately issued U.S.
Patent No. 8,216,021 B1 on July 10, 2012 (the 021 Patent).

50.
The 021 Patent was infringed by the Victorias Secret Defendants.
51.
Subsequently, in 2013, the Plaintiff discovered errors in the language describing
certain ratios depicted in the 021 Patent.

52.
These errors were brought to the attention of the USPTO by the timely filing of a
Reissue Application.
53.
The Plaintiff incurred significant expenses and legal fees clarifying the claims of
the 021 Patent.

54.
Claims in the 021 Patent have now been clarified by the USPTO, and the 021
Patent reissued as RE45838E on January 12, 2016.

The Defendants Infringing Products
55.
The specific identity of the Victorias Secret Defendants supplier is not yet
known, but this unknown supplier represents yet another party who has infringed upon Zephyrs
Patents.
56.
On information and belief, the Victorias Secret Defendants own and/or manage
approximately 1,000 retail stores in all fifty states, through which they do substantial business.
57.
Through the Victorias Secret print catalog and online distribution through
VictoriasSecret.com, the Victorias Secret Defendants reach more than 390 million customers
each year.
10
58.
The infringing products are sold by the Victorias Secret Defendants under the
Victorias Secret brand STYLE SECRETS SHAPING INSERTS, Item # SH-313-762 (Exhibit
5):
Victorias Secret Style Secrets Shaping Inserts

Packaging
(Front View)
11
Victorias Secret Style Secrets Packaging

(Reverse View)
FIG. 4
59.
While the 021 Patent application was still pending before the USPTO, from
September 30, 2011 to July 12, 2012, Zephyrs supplied tens of thousands of packages of the
Kidney Shaped Push Up Inserts to the Victorias Secret Defendants.
60.
The Victorias Secret Defendants sold these Kidney Shaped Push Up Inserts
through their network of stores and on their website to consumers at $58.00 per package.
61.
In August 2012, the Victorias Secret Defendants purported to terminate an
agreement with Zephyrs based on disagreements.

62.
Simultaneously, Zephyrs filed a federal lawsuit against the Victorias Secret
Defendants.
12
63.
That case was captioned Runberg, Inc. d/b/a Zephyrs v. Victorias Secret Stores,
Inc., et al., United States District Court for the Southern District of Ohio, Eastern Division, Case
No. 2:12-CV-722 (the Prior Lawsuit).
64.
The Complaint in the Prior Lawsuit accused the Victorias Secret Defendants of
intentionally breaching the parties agreement, by:

a. Committing false advertising by misleading consumers about the nature and
quality of the hosiery products that they were offering for sale as those designed
and previously supplied by Zephyrs, by falsely depicting Zephyrs products on the
packaging, when they were accused of selling cheaper, lower quality knockoffs;
b. materially breaching the written Amended Master Sourcing agreement with
Zephyrs by, inter alia, directly contacting Zephyrs suppliers, and by unlawfully
using Zephyrs proprietary information when doing so, in order to reduce or
eliminate the volume of sales conducted through Zephyrs; and
c. delaying processing usual orders, until and unless Zephyrs acceded to a variety of
unreasonable demands. One particular demand included the parties entering into
a new agreement under which Zephyrs would be required to cede ownership of its
own proprietary information, patents and other intellectual property.
65.
The Victorias Secret Defendants denied each of these allegations, and filed a
Counterclaim against the Plaintiff alleging that Zephyrs had breached the same agreement.
66.
In its Counterclaim, Victorias Secret alleged, inter alia, that the Plaintiff had
failed to comply with its brand standards and cited various audits of Zephyrs facilities.
67.
While the 021 Patent was not part of the Prior Lawsuit, during the course of
communications in the Prior Lawsuit, Zephyrs became concerned that the Victorias Secret
Defendants might later choose to infringe upon the Plaintiffs valid and enforceable U.S. patent
rights in the Invention.
68.
Specifically, Zephyrs had become concerned that the Victorias Secret Defendants
might later ask a new supplier to slavishly copy and effectively knock off the unique patented
shaping inserts that she had previously supplied to them.
13
69.
Consequently, even though the Victorias Secret Defendants were clearly already
aware of the existence of the 021 Patent from prior communications, Zephyrs outside counsel
again placed the Victorias Secret Defendants on formal notice of the Plaintiffs concern about
this prospect of patent infringement on September 12, 2012, by writing a formal letter to the
Victoria Secret Defendants outside counsel, stating:
To the extent that Victorias Secret apparently intends to sell third parties gelshaping inserts, we would like to bring the attached U.S. Patent No. 8,216,021 owned
by our client to your attention, to ensure that your clients do not infringe it directly
or indirectly.
70.
A hard copy of the 021 Patent was provided to the Victorias Secret Defendants
outside counsel at that time.

71.
The Victorias Secret Defendants never responded to this assertion.
72.
At no time have the Victorias Secret Defendants ever claimed that the 021
Patent was invalid.

73.
At no time have the Victorias Secret Defendants ever claimed that Zephyrs
Patents were invalid.

74.
Patent was unenforceable.

75.
At no time have the Victorias Secret Defendants ever claimed that Zephyrs
Patents were unenforceable.

76.
Patent did not properly name Debra MacKinnon as the sole inventor.
77.
At no have the Victorias Secret Defendants ever claimed that Zephyrs Patents
did not properly name Debra MacKinnon as the sole inventor.
14
78.
The Victorias Secret Defendants never sought or received any license, express or
implied, to practice the 021 Patent from the Plaintiff.

79.
The Victorias Secret Defendants never sought or received any license, express or
implied, to practice any of Zephyrs Patents.

80.
Subsequently, the parties to the Prior Lawsuit decided to dismiss their pending
claims and counterclaims with prejudice.

81.
At the time that the pending claims and counterclaims in the Prior Lawsuit were
dismissed with prejudice, the parties made it clear to the Court and to one another that the mutual
releases that were exchanged and the dismissal related solely to the breach of contract claims
actually asserted in the Complaint and Counterclaim.
82.
On the record before the District Court, the parties expressly reserved their rights
with regard to any unasserted, potential future patent disputes that might arise between them.
83.
Nonetheless, the Victorias Secret Defendants have apparently chosen to slavishly
copy the Invention, without paying any royalty or receiving any express or implied licenses to
the Zephyrs Patents.
84.
The Kidney-Shaped Push Up Inserts are being sold by the Victorias Secret
Defendants in the same packaging under their brand STYLE SECRETS, and for the same price
to customers, in their stores and on their website.
85.
The products currently being sold by the Victorias Secret Defendants are slavish
copies, and infringe upon Zephyrs Patents.

86.
Below are comparisons between the figures included in Zephyrs Patents, and the
Victorias Secret Defendants Kidney-Shaped Push Up Inserts:
15
Figure 3 from U.S. Patent No. RE45838E

(Main Surface)
Victorias Secrets Kidney-Shaped Push Up

Insert (Main Surface)

(Isometric Reverse View)

Insert (Isometric Reverse View)

Insert
16
Damages to Zephyrs from the Victorias Secret Defendants Conduct

87.
The Victorias Secret Defendants have sold, and continue to sell, the infringing
Kidney Shaped Push Up Inserts to consumers for $58.00 at retail. See Exhibit 5.
88.
Furthermore, on information and belief, Supplier John Doe 1, the Victorias
Secret Defendants unknown supplier, is manufacturing, distributing and selling the infringing
Kidney Shaped Push Up Inserts.
89.
No royalties whatsoever have been paid to the Plaintiff or the Inventor for these
profitable sales, thus unjustly and unlawfully enriching the Defendants at the Plaintiffs expense.
The Victorias Secret Defendants Willfulness
90.
Upon information and belief, all the Defendants have attempted to unlawfully
increase their profits by, inter alia, infringing upon Zephyrs Patents without paying any royalty
or receiving any express or implied license from the Plaintiff.
91.
Furthermore, the Victorias Secrets Defendants have profited unlawfully by
erroneously claiming ownership of the Plaintiffs Invention in the Kidney Shaped Push Up
Inserts.
Erroneous Inventorship Claimed In the U.S. Design Patent
92.
The Victorias Secret Defendants law firm filed a design patent application with
the USPTO on March 31, 2010, namely U.S. Design Patent Application No. US 29/349,417.
93.
The VS Push Up Design Patent erroneously named Laurie Jeannine Wirgler and
Heather Naughton, the two Victorias Secret Defendants employees to whom Ms. MacKinnon
had disclosed the Invention, as the inventors.
94.
On information and belief, Laurie Jeannine Wirgler and Heather Naughton
assigned the VS Push Up Design Patent to Defendant Victorias Secret Brand Management, Inc.
17
95.
The VS Push Up Design Patent application erroneously omitted Debra
MacKinnon as the inventor.

96.
Instead, VS Push Up Design Patent application erroneously named Laurie
Jeannine Wirgler and Heather Naughton as inventors. See Exhibit 3.

Erroneous Inventorship Claimed In the Defendants Canadian Patent
97.
Furthermore, on or about June 30, 2010, the Victorias Secret Defendants
correspondent law firm filed a formal industrial design application with the Canadian Patent
Office, which became Canadian Patent Registration No. 136170 on or about January 27, 2011.
98.
The VS Canadian Push-Up Design Patent application erroneously omitted Debra
MacKinnon as the inventor.

99.
The VS Canadian Push-Up Design Patent application erroneously named Laurie
Jeannine Wirgler and Heather Naughton as the only inventors. See Exhibit 4.
FIRST CAUSE OF ACTION
(AGAINST ALL DEFENDANTS)
INFRINGEMENT OF ZEPHYRS RE45838E PATENT
IN VIOLATION OF 35 U.S.C. 271
100.
The Plaintiff realleges and incorporates by reference the allegations of Paragraphs
1 to 99 of this Complaint as though fully set forth herein.

101.
Upon information and belief, in violation of 35 U.S.C. 271, the Defendants are
and have been directly infringing, contributing to the infringement of, and/or inducing others to
infringe Zephyrs RE45838E Patent by making, using, selling, and/or offering to sell in the
United States, or importing into the United States, products or processes that practice the
inventions claimed in the RE45838E Patent.
18
102.
As a result of the Defendants unlawful infringement of the RE45838E Patent, the
Plaintiff has suffered and will continue to suffer damages.

103.
The Plaintiff is entitled to recover from the Defendants the damages suffered by it
as a result of their unlawful acts.

104.
On information and belief, the Defendants intend to continue their unlawful
infringing activities, and the Plaintiff continues to and will continue to suffer irreparable harm for which there is no adequate remedy at law - from such unlawful infringing activities unless
this Court enjoins the Defendants from further infringing activities.
SECOND CAUSE OF ACTION
(AGAINST ALL DEFENDANTS)
PAST INFRINGEMENT OF ZEPHYRS U.S. PATENT 8,216,021 B1
IN VIOLATION OF 35 U.S.C. 271
105.

106.
Upon information and belief, in violation of 35 U.S.C. 271, the Defendants
directly infringed, contributing to the infringement of, and/or induced others to infringe Zephyrs
U.S. Patent 8,216,021 by making, using, selling, and/or offering to sell in the United States, or
importing into the United States, products or processes that practice the inventions claimed in the
021 Patent.
107.
As a result of the Defendants unlawful infringement of the 021 Patent, the
Plaintiff has suffered damages.

108.
19
THIRD CLAIM FOR RELIEF

CORRECTION OF INVENTORSHIP OF
U.S. DESIGN PATENT D655,476 S1
PURSUANT TO 35 U.S.C. 256
(AGAINST DEFENDANT
VICTORIAS SECRET STORES BRAND MANAGEMENT, INC.)
109.

110.
As described herein, U.S. Design Patent No. D655,476 S1 erroneously lists
Heather Naughton and Laura Jeannine Wirgler, and not Debra MacKinnon, as inventors.
111.
Debra MacKinnon is the only proper inventor that should have been named as the
rightful inventor of U.S. Design Patent No. D655,476 S1.

112.
On information and belief, on or about March 31, 2010, Heather Naughton
executed a written assignment, purporting to assign all right, title and interest to U.S. Design
Patent No. D655,476 S1 to Defendant Victorias Secret Stores Brand Management.
113.
On information and belief, on or about April 30, 2010, Laura Jeannine Wirgler
executed a written assignment, purporting to assign all right, title and interest in U.S. Design
Patent No. D655,476 S1 to Defendant Victorias Secret Stores Brand Management, Inc.
114.
On information and belief, on or about June 21, 2010, Defendant Victorias Secret
Stores Brand Management, Inc.s correspondent, Ward & Olivo, 382 Springfield Avenue,
Summit NJ 07901, filed both such Assignments with the USPTO
115.
For all the foregoing reasons, the Plaintiff seeks a Certificate, pursuant to 35
U.S.C. 256, to correct the inventorship of U.S. Design Patent No. D655,476 S1 to reflect that
Debra MacKinnon is the only rightful inventor.
20
FOURTH CAUSE OF ACTION

DECLARATORY JUDGMENT OF INVALIDITY OF PATENT ASSIGNMENTS OF
U.S. DESIGN PATENT D655,476 S1 UNDER 28 U.S.C. 2201(a)
(AGAINST DEFENDANT
116.

117.
As described herein, U.S. Design Patent No. D655,476 S1 erroneously lists
Heather Naughton and Laura Jeannine Wirgler, and not Debra MacKinnon, as the only inventors.
118.
Debra MacKinnon is the only inventor that should have been named as the
rightful inventor of U.S. Design Patent No. D655,476 S1.

119.
On information and belief, on or about March 31, 2010, Heather Naughton
Patent No. D655,476 S1 to Defendant Victorias Secret Stores Brand Management.
120.
On information and belief, on or about April 30, 2010, Laura Jeannine Wirgler
Patent No. D655,476 S1 to Defendant Victorias Secret Stores Brand Management, Inc.
121.
On information and belief, on or about June 21, 2010, Defendant Victorias Secret
Stores Brand Management, Inc.s correspondent, Ward & Olivo, 382 Springfield Avenue,
Summit NJ 07901, filed both such Assignments with the USPTO
122.
For all the foregoing reasons, pursuant to 28 U.S.C. 2201(a), the Plaintiff seeks
a Declaratory Judgment that these assignments executed by the named inventors and filed with
the USPTO were invalid ab initio.
21
FIFTH CAUSE OF ACTION

DECLARATORY JUDGMENT OF OWNERSHIP OF
U.S. DESIGN PATENT D655,476 S1 UNDER 28 U.S.C. 2201(a)
(AGAINST DEFENDANT
123.

124.
For all the foregoing reasons, pursuant to 28 U.S.C. 2201(a), the Plaintiff seeks
a Declaratory Judgment that it is the only rightful owner of U.S. Design Patent No. D655,476 S1.
SIXTH CAUSE OF ACTION
UNLAWFUL CONVERSION UNDER NEW YORK LAW
(AGAINST THE VICTORIAS SECRET DEFENDANTS)
125.

126.
The conduct of the Victorias Secret Defendants as alleged herein violates the
New York common law against conversion, the unlawful exercise of ownership over the tangible
property of the Plaintiff, a New York corporation.
127.
U.S. Design Patent No. D655,476 S1 is a tangible manifestation of the intellectual
property rightfully belonging to the Plaintiff.

128.
U.S. Canadian Design Patent No. 136170 is a tangible manifestation of the
intellectual property rightfully belonging to the Plaintiff.

129.
As a result of the Defendants unlawful conduct as complained of herein, the
Plaintiff has suffered and will continue to suffer damages.
22
130.

131.
On information and belief, the Defendants intend to continue their unlawful
infringing activities, and the Plaintiff continues to and will continue to suffer irreparable harm for which there is no adequate remedy at law - from such unlawful infringing activities unless
this Court enjoins the Defendants from further infringing activities.
SEVENTH CAUSE OF ACTION
UNJUST ENRICHMENT UNDER NEW YORK LAW
(AGAINST THE VICTORIAS SECRET DEFENDANTS)
132.

133.
As a result of the Victorias Secret Defendants unlawful conduct as complained
of herein, the Plaintiff has suffered and will continue to suffer damages.
134.
The Plaintiff is entitled to recover from the Victorias Secret Defendants the
damages suffered by it as a result of their unlawful acts.

135.
On information and belief, the Victorias Secret Defendants intend to continue
their unlawful infringing activities, and the Plaintiff continues to and will continue to suffer
irreparable harm - for which there is no adequate remedy at law - from such unlawful infringing
activities unless this Court enjoins the Victorias Secret Defendants from further infringing
activities.
136.
The Victorias Secret Defendants have benefitted at the Plaintiffs expense, by the
conduct complained of herein.
23
137.
Equity and good conscience require restitution from the Victorias Secret
Defendants to the Plaintiff.

138.
Therefore, the Plaintiff seeks disgorgement of the Victorias Secret Defendants
profits attributable to the sale of all products claimed by U.S. Design Patent No. D655,476 S1.
139.
The Plaintiff also seeks disgorgement of the Victorias Secret Defendants profits
attributable to the sale of all products claimed by Canadian Design Patent Reg. No. 136170.
PRAYER FOR RELIEF
WHEREFORE, the Plaintiff prays for the following relief:
a.
That the Defendants be declared to have infringed, induced others to infringe

and/or committed acts of contributory infringement with respect to the claims of
Zephyrs Patents as alleged above;
b.
That the Defendants and their officers, agents, servants, employees, and all those
persons acting or attempting to act in active concert or in participation with them
or acting on their behalf be immediately, preliminarily and permanently enjoined
from further infringement of Zephyrs RE45838E Patent;
c.
That the Defendants be ordered to account for and pay to Plaintiff all damages
caused to it by reason of their infringement of Zephyrs Patents pursuant to 35
U.S.C. 284;
d.
That the Defendants be ordered to pay treble damages for willful infringement of
Zephyrs Patents pursuant to 35 U.S.C. 284;
e.
That the inventorship of U.S. Design Patent No. D655,476 S1 be ordered to be

corrected to reflect Debra MacKinnon as the sole rightful inventor;
f.
That U.S. Design Patent No. D655,476 S1 be ordered to be transferred to the
24
Plaintiff and ownership declared in its favor under 28 U.S.C. 2201(a);

g.
That Canadian Registration No. 136170 be ordered to be transferred to the

Plaintiff and ownership declared in its favor;
h.
That all unlawful profits attributable to the Victorias Secret Defendants acts of
unjust enrichment be disgorged and paid to the Plaintiff;
i.
That this case be declared exceptional under 35 U.S.C. 285 and that Plaintiff be
awarded its attorneys fees, expenses, and costs incurred in this action;
j.
That Plaintiff be granted pre-judgment and post-judgment interest on the damages

caused to it by reason of the Defendants infringement of the patents-in-suit;
k.
That the Defendants be ordered to pay all costs associated with this action; and
l.
That the Plaintiff be granted such other and additional relief as the Court deems
just and proper.
25
Case 1:16-cv-00539 Document 1-1 Filed 01/25/16 Page 1 of 28
EXHIBIT 1
UNITED STATES
REISSUED PATENT
RE 45,838 E
EXHIBIT 2
UNITED STATES
PATENT
US 8,216,021 B1
EXHIBIT 3
UNITED STATES
PATENT
US D655,476 S

USO0D655476S
(12) United States Design Patent (10) Patent N0.:

Naughton et al.
(54)
5,334,082 A
5,340,352 A
PAIR OF PUSH-UP BRA PADS
D400,337 S
(US); Laura Jeannine Wirgler,

Assignee: Victorias Secret Stores Brand
Management, Inc., Reynoldsburg, OH
(Us)
(**)
Term:
14 Years
(21) Appl. No.: 29/349,417

(22)
(51)
(52)
(58)
Filed:
US. Cl.
................................................ ..
02-01
...................................................... .. D2/706
Field of Classi?cation Search ................. .. D2/700,
D2/701, 703, 706, 707, 708, 709, 718, 720,

D2/721, 723, 731, 737, 738, 853, 857, 860,
D2/863, 864, 999; 2/67, 69, 109, 113, 114,
2/244, 247, 248, 249, 250, 251, 252, 253,
2/254, 267; 450/1, 54, 55, 56, 57, 65, 89;
602/67; 604/304, 385.14, 386, 388
See application ?le for complete search history.
(56)
References Cited
162,869 A *
2,061,402 A *
2,342,076 A
5/1875
Tallman ........................ .. 450/57
2/1902 Wade
11/1936
2,578,954 A *
12/1951
Van Leuven, Jr. ............ .. 450/49
1/1954 Kempel
2,793,369 A *
5/1957
2,834,352 A
5/1958 Ullian
2,843,130 A *
3,384,091 A *
7/1958
5/1968
3,399,678 A *
9/1968
3,494,365 A
3,620,222 A
D234,445 S
D2/706
Hollar ........................... .. 450/53
2/1946 Herbener
2,664,571 A
Panighini ...................... .. 450/53

Block et a1. ................... .. 450/34
Block .... ..
450/54
Faron ............................ .. 450/55
2/1970 Beals
11/1971 Block
*
3/1975
Snyder, Jr. ................... .. D2/701
8/2000 Lee
5/2001 Chen
6,283,820 B1
9/2001 Huang
6,361,398 B1*
3/2002
6,368,179 B1
4/2002 Kang
6,402,585 B1
6/2002 Gatto et a1.
D462,153 S
6,443,806 B1
6,544,100 B1
9/2002 Nadsady et a1.

9/2002 Fang
4/2003 Nadsady et a1.
Knapp .......................... .. 450/37
7,001,241 B2 *
2/2006
Gorringe et a1. .............. .. 450/81
2010/0029176 A1*
2/2010
Chen et a1. ....... ..
2010/0180358 A1*
7/2010
Drummond et a1. .............. .. 2/67
..
Primary Examiner * Karen E Eldridge Powers

(74) Attorney, Agent, or Firm * Ward & Zinna, LLC
(57)
CLAIM
The ornamental design for a pair of push-up bra pads, as

shown and described.
DESCRIPTION
FIG. 1 is a perspective front view taken from a top left side of
a push-up bra pad;

FIG. 2 is a front elevation view thereof;
FIG. 3 is a right side elevation view thereof;
FIG. 4 is a left side elevation view thereof;
FIG. 5 is a top plan view thereof;

FIG. 6 is a bottom plan view thereof;
U.S. PATENT DOCUMENTS

D35,666 S *
11/1998
* cited by examiner
Mar. 31, 2010
LOC (9) Cl.
12/1997 Chang
*
6,101,630 A
6,224,458 B1
Ardmore, PA (U S)
*1, Mar. 13, 2012
8/1994 Barker
8/1994 Nakanishiet a1.
5,693,164 A
(75) Inventors: Heather Naughton, Columbus, OH
(73)
US D655,476 S
(45) Date of Patent:
Greenblatt ................... .. D2/706
4,816,004 A
4,992,074 A
3/1989 Emanuel
2/1991 DiaZ
5,050,595 A *
9/1991
Krafft ......................... .. 607/108
5,098,330 A *
3/1992
Greenberg .................... .. 450/55
FIG. 7 is a rear elevation view thereof;
FIG. 8 is a perspective front view taken from the top right side
thereof; and,
FIG. 9 is a front view of two push-up bra pads, wherein the
one on the right breast of the wearer is the push-up bra pad
shown in FIGS. 1-8, and the one on the left breast of the
wearer being a mirror image thereof.
The long-short-long broken lines in the drawings de?ne the

bounds of the claimed design and form no part thereof. The
partial human ?gure shown in broken lines in FIG. 9 illus
trates the environment in which the design is used and forms
no part of the claimed design. The stippling shown in the
drawings represents shading of the push-up bra pad.

1 Claim, 9 Drawing Sheets
US. Patent
Mar. 13, 2012
Sheet 1 of9
FIG
US D655,476 S
U S. Patent
FIG.
Mar. 13, 2012
Sheet 2 of9
US D655,476 S
US. Patent
Mar. 13, 2012
Sheet 3 of9
FIG. 3
US D655,476 S
US. Patent
Mar. 13, 2012
Sheet 4 of9
US D655,476 S
US. Patent
Mar. 13, 2012
Sheet 5 of9
FIG. 5
US D655,476 S
US. Patent
Mar. 13, 2012
Sheet 6 of9
FIG. 6
US D655,476 S
US. Patent
Mar. 13, 2012
Sheet 7 of9
FIG. 7
US D655,476 S
U S. Patent
Mar. 13, 2012
Sheet 8 of9
US D655,476 S
US. Patent
Mar. 13, 2012
Sheet 9 of9
FIG. 9
I
I
US D655,476 S
EXHIBIT 4
CANADIAN
INDUSTRIAL DESIGN
REGISTRATION
136170
Details
Third-Party Information Liability Disclaimer
Some of the information on this Web page has been provided by external sources. The Government of Canada
is not responsible for the accuracy, reliability or currency of the information supplied by external sources.
Users wishing to rely upon this information should consult directly with the source of the information.
Content provided by external sources is not subject to official languages, privacy and accessibility
requirements.
Registration number : 136170
Date of Registration :
2011-01-27
Status :
Registered
Title: PUSH-UP BRA PAD
Canadian Classification:
006-01-Miscellaneous Apparel
006-09-Clothing Accessories and Fastening Devices
Other Classes Searched:
006-02-01-Brassieres
013-04-03-Bandages, Surgical Pads, Electrode Pads, Adhesive Plasters, Surgical Dressings and Holders
Therefor
Description:
The design consists of the features of shape, ornament, pattern and configuration of the PUSH-UP BRA PAD
shown in Figure 1 to 9 of the drawings. The portions shown in stippled lines do not form part of the design.
FIGURE 1 is a perspective left view of the push-up bra pad; FIGURE 2 is a front view of the push-up bra pad;
FIGURE 3 is a rear view of the push-up bra pad; FIGURE 4 is a right side view of the push-up bra pad;
FIGURE 5 is a left side view of the push-up bra pad; FIGURE 6 is a top view of the push-up bra pad;
FIGURE 7 is a bottom view of the push-up bra pad; FIGURE 8 is a perspective right view of the push-up bra
pad, and FIGURE 9 is a front view of the push-up bra pad, the stippled lines representing environment.
Interested Parties
Applicant(s) as Filed:
VICTORIA'S SECRET STORES BRAND MANAGEMENT, INC.
Registered Proprietor(s):
4 LIMITED PKY
Details
REYNOLDSBURG, 43068
OHIO, UNITED STATES OF AMERICA
Current Owner(s):
4 LIMITED PKY
REYNOLDSBURG, 43068
OHIO, UNITED STATES OF AMERICA
Client Reference Number:

18414I0026CA01
Representative for Service:

SHAPIRO COHEN
P.O. BOX 13002
KANATA, K2K 0E2
ONTARIO, CANADA
Agent:
SHAPIRO COHEN
P.O. BOX 13002
KANATA, K2K 0E2
ONTARIO, CANADA
Term of Protection: 10 years, subject to payment of a maintenance fee.

Maintenance Fee Paid:
Yes
Filing Date:
2010-06-30
Correction(s):
No
Convention Priority Claim(s):

Country
Filing Date Application No.
UNITED STATES OF AMERICA 2010-03-31 29/349,417
10
11
EXHIBIT 5
VICTORIAS SECRET
WEBSITE PRINTOUT

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Description
Maximize swell and cleavage with a new and improved design. Comes with two
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Pretty big for petite chests
FIRECRACKER
October 14, 2015
Age
25-34
These are good quality inserts that seem like they will last for a long time if they are
From
Anchorage, AK
taken care of. I wear 32A; the smaller of the two inserts was plenty for me. I'm not sure
I will ever wear the larger of the two. It would be sticking out of my bra!
Fit Rating: Slightly Large
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Does the job
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September 30, 2015
From
Its actualy a bit long in length and is not tucked completely under an A cup size bra.
Orlando,Fl
There are two pairs and I think the smaller of the two worked better for smaller cup
Fit Rating: Runs Large
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the look I was going for.

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Runberg v. Victoria&#39;s Secret - Complaint

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Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 1 of 26

UNITED STATES DISTRICT COURT

______ CIV. _______

JURY TRIAL DEMANDED

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 2 of 26

NATURE OF THE ACTION AND PATENTS-IN-SUIT

This lawsuit also seeks an Order transferring

ownership of the VS Push Up Design Patent to the Plaintiff.

Furthermore, this lawsuit seeks a Declaratory Judgment and Order transferring

unjust enrichment that is a result of the erroneous inventorship complained of herein.

PLAINTIFF RUNBERG, INC. D/B/A ZEPHYRS (Zephyrs) is a New York

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 3 of 26

Upon information and belief, DEFENDANT VICTORIAS SECRET

Upon information and belief, DEFENDANT VICTORIAS SECRET STORES

Upon information and belief, DEFENDANT VICTORIAS SECRET STORES

BRAND MANAGEMENT, INC. is a Delaware corporation with a principal place of business

Upon information and belief, DEFENDANT VICTORIAS SECRET DIRECT

Upon information and belief, DEFENDANT LIMITED BRANDS, INC. is a

Upon information and belief, DEFENDANT SUPPLIER JOHN DOE 1 is an

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 4 of 26

JURISDICTION AND VENUE

Zephyrs is a small, woman-owned company.

Zephyrs is a designer and supplier of high quality intimate apparel, including

Ms. MacKinnons inventive concept was to develop a true anatomically correct

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 5 of 26

embody this unique invention (the Invention, see Figures 1 3 below):

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 6 of 26

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 7 of 26

Ms. MacKinnon again described the concept of her invention in writing to

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 8 of 26

Furthermore, Bridge Chip, Zephyrs Chinese factory experienced difficulty in

On July 22, 2008, Ms. Wirgler responded in writing, thanking Zephyrs.

Ms. MacKinnon wrote to Victorias Secret making absolutely clear: The

Engineered Push Up is an original concept created by Zephyrs.

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 9 of 26

Consequently, Victorias Secret participated in a meeting with its own in-house

application with Victorias Secrets Counsel at that time.

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 10 of 26

Patent No. 8,216,021 B1 on July 10, 2012 (the 021 Patent).

The 021 Patent was infringed by the Victorias Secret Defendants.

Subsequently, in 2013, the Plaintiff discovered errors in the language describing

certain ratios depicted in the 021 Patent.

the 021 Patent.

Patent reissued as RE45838E on January 12, 2016.

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 11 of 26

Victorias Secret Style Secrets Shaping Inserts

Victorias Secret Style Secrets Packaging

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 12 of 26

In August 2012, the Victorias Secret Defendants purported to terminate an

agreement with Zephyrs based on disagreements.

Simultaneously, Zephyrs filed a federal lawsuit against the Victorias Secret

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 13 of 26

intentionally breaching the parties agreement, by:

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 14 of 26

outside counsel at that time.

The Victorias Secret Defendants never responded to this assertion.

Patent was invalid.

Patents were invalid.

Patent was unenforceable.

Patents were unenforceable.

did not properly name Debra MacKinnon as the sole inventor.

Case 1:16-cv-00539 Document 1 Filed 01/25/16 Page 15 of 26

implied, to practice the 021 Patent from the Plaintiff.

implied, to practice any of Zephyrs Patents.

Runberg v. Victoria's Secret - Complaint

Runberg v. Victoria's Secret - Complaint

CIV. _