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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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KREG ENTERPRISES, INC., an Iowa Case No. '19CV1125 BAS WVG
17 corporation,
COMPLAINT AND DEMAND FOR
18 Plaintiff, JURY TRIAL
19 vs.
20 ARMOR TOOL, LLC, an Arizona
limited liability company
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Defendant.
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.2 Page 2 of 37
1 COMES NOW Plaintiff, Kreg Enterprises, Inc., and for its Complaint against
2 Defendant, Armor Tool, LLC, hereby states and alleges as follows:
6 Iowa with its principal place of business at 201 Campus Dr., Huxley, Story County,
7 Iowa.
11 3. This Court has subject matter jurisdiction over this lawsuit pursuant to
12 28 U.S.C. §§ 1331 and 1338.
13 4. This Court has personal jurisdiction over all parties to this lawsuit.
14 5. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400.
15 GENERAL ALLEGATIONS
16 6. In 1986, Craig Sommerfeld was in the process of building his home and
17 needed to find a way to attach his dowelled face frames to his kitchen cabinet carcass
18 members. Although he was a tool and die maker by trade, and woodworker out of
19 necessity, Craig had a problem. Not wanting to nail the face frames on and then fill
20 them with putty, he designed and built “Craig’s Jig,” which was a single-hole pocket-
21 hole jig crafted from steel and aluminum. Craig’s Jig allowed him to attach the face
22 frames from the cabinet’s interior, where the joint could be hidden from view.
23 7. Encouraged by friends and coworkers, Craig built a few more jigs and
24 set out to show them to the public at local woodworking shows. At these shows,
25 Craig met an audience who had no knowledge of the joinery method he was
26 promoting, yet they were very interested in learning about a new way to build
27 projects with wood. Week after week, month after month, year after year, Craig
28 continued to build his products and promote them at weekend woodworking shows.
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.3 Page 3 of 37
3 Jigs® to fully-automatic machines, Kreg offers simple solutions that have changed
4 the way thousands of woodworkers join wood. In addition, Kreg offers other
5 innovative tools for clamping, joining, routing, cutting, measuring, and more.
12 11. On July 31, 2012, U.S. Patent No. 8,231,313 (the “‘313 Patent”)
13 (attached hereto as Exhibit 1), entitled “Adjustable Holding System” was duly and
16 12. On June 27, 2013, Allen IP Incorporated, as assignor, assigned all right,
17 title and interest in and to the ‘313 Patent to Kreg.
18 13. At all times relevant to this Complaint, the ‘313 Patent has been in force,
19 and Kreg has been, and is, the owner of all right, title and interest in and to the ‘313
20 Patent.
21 14. The technology of the ‘313 Patent has been incorporated into Kreg’s line
22 of pocket hole jigs including:
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.4 Page 4 of 37
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b. Kreg’s K4 pocket hole jig system:
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.5 Page 5 of 37
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13 15. Armor, without permission from Kreg, has been and continues to
14 infringe the ‘313 Patent by manufacturing, using, selling, and offering to sell in the
15 United States a product or products that meet all of the requirements of at least Claim
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a guide assembly, adapted and arranged to be movable with
respect to a portion of the base, having a guide channel
24 disposed to receive and guide a shank of a drill bit, the
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guide assembly having at least one exit hole adapted to
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27 Elements of the claim language has been placed in colored, bold and underlined text
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28 to correlate with the comparison to Armor’s “Auto-Jig Pocket Hole System” shown
below.
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.6 Page 6 of 37
5 manners:
a. Armor’s Auto-Jig Pocket Hole System2 is “[a]n adjustable
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“base”
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All photographs utilized in this section are of Armor’s Auto-Jig Pocket Hole System
and came from Armor’s website (https://armor-tool.com).
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.7 Page 7 of 37
1 c. “the base having at least one exit hole adapted to serve as a chip
2 breaker by allowing waste material generated during drilling to
3 exit a drilling area; and…”
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“drilling area”
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“base” exit hole”
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COMPLAINT
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“guide assembly” “base”
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COMPLAINT
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“shank of a drill bit”
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.10 Page 10 of 37
1 18. Armor’s past and continued infringement of the ‘313 Patent is willful in
2 nature and the result of egregious misconduct.
12 22. On February 19, 2019, U.S. Patent No. D840,803 (the “‘D803 Patent”)
13 (attached hereto as Exhibit 2), entitled “Small Container” was duly and legally issued
16 23. At all times relevant to this Complaint, the ‘D803 Patent has been in
17 force, and Kreg has been, and is, the owner of all right, title and interest in and to the
18 ‘D803 Patent.
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25 Note, the USPTO errantly published annotated figures in the ‘D803 patent. Kreg
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26 has discussed this matter with Examiner Omeed Agilee, the Examiner assigned to the
case. Pursuant to the Examiner’s direction Kreg has filed a Request for a Certificate
27 of Correction under 37 CFR 1.322 “Certificate of correction of Office mistake”
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COMPLAINT
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COMPLAINT
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14 25. Armor, without permission from Kreg, has been and continues to
15 infringe the ‘D803 Patent by manufacturing, using, selling, and offering to sell in the
16 United States a product or products that embodies the patented design or any
18 confusing the design of Armor’s products with the patented design protected under
22 appearance to that shown in the ‘D803 Patent and reveals the similarities which result
23 in confusion:
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COMPLAINT
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COMPLAINT
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COMPLAINT
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23 27. Armor’s past and continued infringement of the ‘D803 Patent is willful
24 in nature and the result of egregious misconduct.
9 dress.
10 32. Kreg has expended considerable time, effort and resources to design and
11 develop unique and inherently distinctive containers (including obtaining the ‘D803
13 33. Kreg’s trade dress has become associated with Kreg and has become an
14 indication of a single, high-quality source for products in the minds of the relevant
15 purchasing public.
16 34. Kreg is the owner of all right, title, and interest in and to its trade dress.
17 35. Kreg’s trade dress is nonfunctional.
18 36. Armor, without permission from Kreg, has been and continues to
19 manufacture, sell, and offer to sell in the United States nearly identical containers in a
20 manner that is likely to cause confusion among ordinary customers as to the source,
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.23 Page 23 of 37
1 a. Armor’s container lid has the same general visual appearance and
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COMPLAINT
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COMPLAINT
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1 d. Armor’s container top side has the same general visual appearance
2 and is substantially similar to Kreg’s container top side, including,
3 without limitation, size, shape, dimension, material, protrusions
4 and shelf hook:
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COMPLAINT
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e. Armor’s container bottom side has the same general visual
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appearance and is substantially similar to Kreg’s container bottom
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side, including, without limitation, size, shape, dimension,
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material, protrusions and trapezoids:
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COMPLAINT
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COMPLAINT
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COMPLAINT
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19 41. Kreg manufactures and sells multiple lines of wood project clamps in
20 packaging which contains Kreg’s distinctive trade dress.
21 42. Kreg has expended considerable time, effort and resources to design and
22 develop unique and inherently distinctive packaging for its clamps.
23 43. Kreg’s trade dress has become associated with Kreg and has become an
24 indication of a single, high-quality source for clamp packaging in the minds of the
26 44. Kreg is the owner of all right, title, and interest in and to its trade dress.
27 45. Kreg’s trade dress is nonfunctional.
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COMPLAINT
Case 3:19-cv-01125-BAS-WVG Document 1 Filed 06/17/19 PageID.31 Page 31 of 37
1 46. Armor, without permission from Kreg, has been and continues to
2 manufacture, sell, and offer to sell in the United States nearly identical clamp
6 1125(a)(1).
9 competes with Kreg. Specifically, Armor’s clamp packaging has the same general
11 without limitation, the size, shape, dimensions, positioning, orientation, material, and
12 color.
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4 follows:
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COMPLAINT
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1 E. Order all such other and further relief as the Court deems just
2 under the circumstances.
3 DEMAND FOR JURY TRIAL
4 Plaintiff, Kreg Enterprises, Inc., hereby demands a trial by jury on all issues
5 raised herein that are triable to a jury under applicable law.
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Respectfully submitted,
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Dated: June 17, 2019 CALDARELLI HEJMANOWSKI PAGE & LEER LLP
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By:
10 Ben West
David Lichtenstein
11 Counsel for KREG ENTERPRISES, INC.
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COMPLAINT