MDPL Complaint 7

Case 4:09-cv-00711-DCB Document 1 Filed 12/18/09 Page 1 of 14
1 Deanna Conn, Esq. (AZ SB No. 015676)

deanna.conn@quarles.com
2 QUARLES & BRADY LLP
One South Church Avenue, Suite 1700
3 Tucson, Arizona 85701
Telephone: (520) 770-8700
4 Facsimile: (520) 770-2209
5 Jeffrey M. Olson, Esq. (CA SB No. 104074)
jolson@sidley.com
6 Samuel N. Tiu, Esq. (CA SB No. 216291)
stiu@sidley.com
7 Matthew S. Jorgenson, Esq. (CA SB No. 229131)
mjorgenson@sidley.com
8 SIDLEY AUSTIN LLP
555 West Fifth Street, Suite 4000
9 Los Angeles, California 90013
Telephone: (213) 896-6000
10 Facsimile: (213) 896-6600
11 Attorneys for Plaintiffs
Synthes USA, LLC and
12 Synthes USA Sales, LLC
13
14
UNITED STATES DISTRICT COURT
15
DISTRICT OF ARIZONA
16
17 Synthes USA, LLC, a Delaware limited ) Case No. _______________

18 liability company; and Synthes USA Sales, )
LLC, a Delaware limited liability company, ) COMPLAINT FOR PATENT
19 ) INFRINGEMENT, FALSE
Plaintiffs, ) DESIGNATION OF ORIGIN UNDER
20 )
THE LANHAM ACT, AND UNFAIR
)
21 v. ) COMPETITION
)
22 Diverse Surgical Supplies, Inc., a California )
23 corporation; MedFix Solutions, Inc., an ) JURY TRIAL DEMANDED
Arizona corporation; and Tullio Catino, an )
24 individual, )
)
25 )
Defendants.
26 )
)
27
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1 Plaintiffs Synthes USA, LLC (“Synthes USA”) and Synthes USA Sales, LLC
2 (Synthes USA Sales”) (collectively hereinafter “Plaintiffs”), through their attorneys, allege
3 for their complaint against Defendants Diverse Surgical Supplies, Inc. (“DSS”), MedFix
4 Solutions, Inc. (“MedFix”) and Tullio Catino (“Catino”) (collectively hereinafter
5 “Defendants”), upon knowledge with respect to their own actions and upon information and
6 belief with respect to the actions of others:
7 JURISDICTION AND VENUE
8 1. This Court has original jurisdiction over the subject matter of this action
9 pursuant to the provisions of Title 28, U.S.C. § 1331, § 1337 and § 1338(a), this action
10 arising under the Constitution and the laws of the United States, including the patent laws
11 enacted by Congress set forth in Title 35, U.S.C. §§ 1 et seq. and the Lanham Act set forth in
12 Title 15, U.S.C. §§ 1051 et seq. This Court further has jurisdiction over the subject matter of
13 this action pursuant to Title 28, U.S.C. § 1367, as it involves substantial claims arising under
14 federal law together with a related claim arising under Arizona law. This Court further has
15 jurisdiction over this action pursuant to Title 28, U.S.C. § 1332(a)(1) and (2) as it involves
16 citizens of different states and of a foreign state, and the amount in controversy exceeds
17 $75,000, exclusive of interest and costs.
18 2. The Court has personal jurisdiction over DSS because, inter alia, on
19 information and belief, DSS conducts business within the State of Arizona in sufficient
20 volume and frequency to confer personal jurisdiction in this district and has committed acts
21 of patent infringement within this district. On information and belief, DSS is a distributor of
22 Syntec Scientific Corp. and/or its affiliates (hereinafter referred to as “Syntec”) and
23 distributes and sells medical devices, including bone plate devices, obtained from or
24 manufactured by Syntec that infringes Plaintiffs’ patents, including distributing and selling
25 such devices within this judicial district through Defendants MedFix and Catino. On
26 information and belief, DSS is responsible in part or in whole for the injuries that have
27 resulted from those acts of infringement.
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1 3. The Court has personal jurisdiction over MedFix because, inter alia, on
2 information and belief, MedFix has its principal place of business within the state of Arizona
3 and within this judicial district, conducts business within the State of Arizona in sufficient
4 volume and frequency to confer personal jurisdiction in this district, and has committed acts
5 of patent infringement and other tortious acts within this district. On information and belief,
6 MedFix distributes and sells the infringing bone plate devices obtained by DSS from Syntec,
7 including distributing and selling the infringing bone plate devices within this judicial district
8 through Catino. On information and belief, MedFix is responsible in part or in whole for the
9 injuries that have resulted from those infringement and other tortious acts alleged herein.
10 4. The Court has personal jurisdiction over Catino because, inter alia, on
11 information and belief, Catino is a resident of Arizona who lives in this judicial district and
12 who has committed patent infringement and other tortious acts alleged herein within this
13 judicial district.
14 5. Venue is proper in this district under 28 U.S.C. §§ 1391(b) and (c) and
15 § 1400(b) because each Defendant is subject to personal jurisdiction in this judicial district,
16 and because a substantial part of the events giving rise to the claims herein occurred in this
17 district.
18 THE PARTIES
19 6. Plaintiff Synthes USA is a Delaware limited liability company having its
20 principal place of business at 1302 Wrights Lane East, West Chester, Pennsylvania 19380.
21 7. Plaintiff Synthes USA Sales is a Delaware limited liability company having its
22 principal place of business at 1302 Wrights Lane East, West Chester, Pennsylvania 19380.
23 8. Upon information and belief, Defendant DSS is a California corporation
24 having a principal place of business at 7033 N. Fresno St., Suite 202, Fresno, California
25 93720.
26 9. Upon information and belief, Defendant MedFix is an Arizona corporation
27 having a principal place of business at 2109 E. Grant Rd., Tucson, Arizona 85719.
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1 10. Upon information and belief, Defendant Catino is an individual residing at

2 1730 E Calle Altivo, Tucson, Arizona 85718.
3 COUNT I
4 AGAINST ALL DEFENDANTS
5 INFRINGEMENT OF U.S. PATENT NO. 7,354,441
6 11. Paragraphs 1 through 10 are hereby incorporated by reference.
7 12. Synthes USA is the assignee of United States Patent No. 7,354,441 (“the ‘441
8 patent”), issued on April 8, 2008, and entitled “Bone Plate.” Synthes USA Sales is the
9 exclusive licensee of the ‘441 patent, including having the exclusive right to offer to sell and
10 sell the bone plate of the ‘441 patent.
11 13. Possessing all substantial rights to the ‘441 patent and the ‘441 patent being in
12 full force and effect, Plaintiffs have the right to sue for infringement thereof.
13 14. Upon information and belief, Defendants are infringing the ‘441 patent, either
14 directly or contributorily, by using, selling, offering for sale or importing bone plate devices
15 obtained from or manufactured by Syntec, or actively inducing the infringement of the ‘441
16 patent by using, selling, offering for sale, or importing such devices, all in violation of 35
17 U.S.C. §§ 271 et seq., and will continue to do so unless enjoined by this Court.
18 15. By reason of Defendants’ acts of infringement, Plaintiffs have suffered and are
19 suffering damages, including impairment of the value of the ‘441 patent, in an amount yet to
20 be determined.
21 16. Defendants’ acts of infringement are causing irreparable harm to Plaintiffs and
22 will continue to cause irreparable harm unless enjoined by this Court.
23 17. Upon information and belief, Defendants’ infringement of the ‘441 patent is
24 willful and justifies a trebling of damages pursuant to 35 U.S.C. § 284. Further, this is an
25 exceptional case supporting an award of reasonable attorneys’ fees pursuant to 35 U.S.C. §
26 285.
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1 COUNT II
6 patent”), issued on April 13, 2004, and entitled “Bone Plate.” Synthes USA Sales is the
12 directly or contributorily, by making, using, selling, offering for sale or importing plate
13 devices obtained from or manufactured by Syntec, or actively inducing the infringement of
14 the ‘759 patent by making, using, selling, or offering for sale such devices, all in violation of
15 35 U.S.C. §§ 271 et seq., and will continue to do so unless enjoined by this Court.
18 be determined.
22 willful and justifies a trebling of damages pursuant to 35 U.S.C. § 284. Further, this as an
24 285.
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1 COUNT III
6 patent”), issued on January 20, 1998, and entitled “Bone Plate.” Synthes USA Sales is the
12 directly or contributorily, by making, using, selling, offering for sale or importing bone plate
13 devices obtained from or manufactured by Syntec, or actively inducing the infringement of
14 the ‘686 patent by making, using, selling, or offering for sale such devices, all in violation of
15 35 U.S.C. §§ 271 et seq., and will continue to do so unless enjoined by this Court.
18 be determined.
22 willful and justifies a trebling of damages pursuant to 35 U.S.C. § 284. Further, this as an
24 285.
25
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1 COUNT IV
2 AGAINST CATINO AND MEDFIX
3 VIOLATION OF SECTION 43(a) OF THE LANHAM ACT, 15 U.S.C. § 1125
5 33. Synthes USA has been in the orthopedic business for over thirty years, and has
6 long been recognized in the United States and throughout the world as the market and
7 technological leader of a wide variety of medical products, including surgical hardware,
8 apparatus and devices relating to orthopedics and bone fixation. For example, Synthes
9 USA’s LCP bone plate systems filled an unmet need for orthopedic and trauma surgeons, by
10 providing a flexible locking plate system. The introduction of the LCP bone plate system
11 has been recognized as having revitalized the market for bone plates, leading to substantial
12 growth in the market and recognition of Plaintiffs as the technological leader in the field of
13 bone plates. Synthes USA’s LCP bone plate systems quickly became widely popular, and
14 Plaintiffs’ position in the orthopedic trauma market was boosted by the popularity of its
15 innovative LCP systems. Synthes USA’s LCP bone plate systems have been a substantial
16 commercial success, generating hundreds of millions of dollars in sales.
17 34. The SYNTHES trade name and trademark is famous in the orthopedics and
18 surgical arena, and SYNTHES products are the number one seller among hospitals, doctors’
19 offices, outpatient clinics and short-stay medical facilities with orthopedic surgical
20 departments. Due to the highest and superior quality of its products, Synthes USA has a
21 longstanding reputation for excellence in the medical community.
22 35. In recognition of its exclusive and extremely valuable rights and goodwill in
23 the SYNTHES name and mark, the SYNTHES mark has long been registered in the United
24 States and Patent and Trademark Office (“USPTO”) for various orthopedic and surgical
25 products. For example, Synthes USA owns U.S. Registration No. 999,397, issued December
26 10, 1974, for the mark SYNTHES for “instruments and apparatus for surgical, medical, and
27 veterinary purposes solely for bone surgery – namely, instruments and implants for
28 osteosynthesis, including bone screws, bone nails, bone plates and splints, injection needles,
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1 and gum plates.” This registration is valid and subsisting, in full force and effect, and is
2 incontestable.
3 36. The range of SYNTHES brand products is broad. The products range from
4 fixation devices that a doctor or surgeon uses in an outpatient setting, to complex apparatus
5 that are used in major bone reconstruction requiring the services of a major acute care
6 facility. SYNTHES brand products consists of more than 17,000 line items, including
7 screws, plates, rods, clamps, various tools for inserting and securing the implants, such as
8 drills, chucks, wrenches, forceps and nail locking instruments; cases, trays and racks to hold
9 and store the implants and tools; and cleaning instruments and lubricants to ease the insertion
10 of the tools.
11 37. Plaintiffs market and sell their products to hospitals, clinics, surgeons, and
12 healthcare professionals, short-stay medical facilities, and doctors’ offices through an
13 extensive network of sales personnel throughout the United States, including in Arizona. As
14 part of their promotional activities, and further heightening the recognition of the SYNTHES
15 brand in the medical industry, Plaintiffs also participate in numerous trade shows a year,
16 which are attended by surgeons, operating staff, nurses and technical staff throughout the
17 country.
18 38. In conjunction with the marketing and sales of their products, Plaintiffs have
19 also invested significantly in educating and training doctors and operating staff in the use of
20 Plaintiffs’ products, including orthopedic surgical equipment and implants. The education
21 and training that Plaintiffs provide are critically important to the proper use of their products
22 and to the safety of patients.
23 39. As part of a bone reconstruction surgery, Plaintiffs’ bone plates and/or bone
24 screws are implanted in patients using a set of very specialized orthopedic surgical
25 instruments designed by Plaintiffs. Plaintiffs manufacture and sell, lease or loan these
26 specialized orthopedic surgical instruments to hospitals for use in implanting Plaintiffs’ bone
27 plates and/or bone screws. These specialized surgical instruments are placed in a specially
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1 designed graphic case together with Plaintiffs’ bone screws and bone plates and the graphic
2 case bears the SYNTHES mark and logo.
3 40. On information and belief, Catino and MedFix sell or otherwise make available
4 orthopedic products, including bone plates and/or bone screws, manufactured by or obtained
5 from Syntec, or those affiliated with Syntec including DSS, to doctors and hospitals for
6 implanting in patients.
7 41. On information and belief, in conjunction with their use, marketing and sale of
8 Syntec orthopedic products, Catino, assisted by MedFix, has falsely designated the origin of
9 Plaintiffs’ specialized surgical instruments and products for example, by removing the
10 SYNTHES mark and logo from Plaintiffs’ specially designed graphic case, and in its place,
11 labeling Plaintiffs’ graphic case with the confusingly similar name “Syntec.”
12 42. On information and belief, Catino then provides this misbranded set of surgical
13 instruments to doctors and hospitals, including Oro Valley Hospital in Tucson, Arizona,
14 together with the Syntec orthopedic products that he sells. On information and belief, such
15 actions by Catino are likely to cause confusion as to the origin or association of Plaintiffs’
16 products with Syntec or the origin or association of Syntec’s products with Plaintiffs.
17 43. On information and belief, the acts of Catino and MedFix alleged herein, and
18 facilitated by the use of orthopedic products obtained from Syntec and/or DSS, constitute the
19 use in interstate commerce of a false designation of origin, in connection with the sale, or
20 offering for sale, of goods in violation of section 43(a) of the Lanham Action, 15 U.S.C. §
21 1125(a).
22 44. Catino and MedFix are presently engaged in unfair competition and “passing
23 off” and, unless immediately restrained and enjoined, will continue to do so. Plaintiffs’
24 remedy at law is not adequate to compensate them for the harm inflicted and threatened by
25 Catino’s and MedFix’s unlawful actions.
26 45. Plaintiffs have been damaged by Catino’s and MedFix’s unlawful actions in an
27 amount to be proved at trial. Plaintiffs are entitled to recover all profits heretofore realized
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1 by Catino and MedFix for their unlawful acts, as well as Plaintiffs’ costs in this action
2 pursuant to 15 U.S.C. § 1117(a).
3 46. On information and belief, Catino’s and MedFix’s actions have been willful,
4 malicious, and fraudulent with knowledge of the likelihood of confusion and deception and
5 with intent to confuse and deceive, as alleged above. Therefore, Plaintiffs are entitled to
6 recover three times the amount of Catino’s and MedFix’s profits plus Plaintiffs’ reasonable
7 attorneys’ fees pursuant to 15 U.S.C. §§ 1117(a) and 1117(b).
8 COUNT V
9 AGAINST CATINO AND MEDFIX
10 COMMON LAW UNFAIR COMPETITION
12 48. On information and belief, Catino and MedFix, by virtue of their acts as
13 alleged above, have willfully, knowingly, and intentionally engaged in acts of unfair
14 competition in violation of the common law of the State of Arizona.
15 49. On information and belief, Catino’s and MedFix’s actions are likely to cause
16 public confusion due to the “passing off” of Plaintiffs’ products as those of Syntec, or vice
17 versa, or that Syntec’s products are somehow related or associated with, or sponsored or
18 endorsed by Plaintiffs.
19 50. On information and belief, Catino and MedFix are engaged in a competitive
20 business with Plaintiffs, and Catino’s and MedFix’s unlawful acts as alleged above are
21 conducted with the intent to compete unfairly and to injure Plaintiffs.
22 51. By reason of these acts, Plaintiffs have suffered and are suffering actual,
23 permanent and irreparable injury, the extent of which is presently not known, and Plaintiffs
24 will continue suffering damage and irreparable injury unless Catino and MedFix are
25 preliminary and permanently enjoined from their unlawful and unfair acts.
26 52. As a result of the foregoing, Plaintiffs have been injured, and Catino and
27 MedFix have received illicit profits and wrongful gains. Plaintiffs are entitled to restitution
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1 of Catino’s and MedFix’s illicit profits and wrongful gains and any other remedy provided
2 by the law.
3 PRAYER FOR RELIEF
4 WHEREFORE, Plaintiffs pray the Court for the following relief:
5 1. For a judgment that Defendants have infringed the ‘441 patent and that
6 Defendants, their officers, partners, employees, agents, representatives, attorneys and all
7 persons acting or claiming to act on their behalf or under their direction or authority and all
8 persons acting in concert or in participation with Defendants, be enjoined during the
9 pendency of this action, and thereafter during the term of the ‘441 patent, from:
10 (a) making, using, offering for sale, selling, exporting, or otherwise supplying
11 any and all infringing devices, and any products or infringing methods, that
12 violate the ‘441 patent, and
13 (b) inducing others to violate the ‘441 patent, or contributing to such
14 infringement.
24 infringement.
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7 infringement.
8 4. That Defendants, including their aforementioned associates, be required to
9 deliver up to Plaintiffs for destruction any and all advertising, marketing or distribution
10 materials related to Defendants’ infringing products;
11 5. That Defendants, including their aforementioned associates, be required to
12 account for and pay over to Plaintiffs the cumulative damages sustained by Plaintiffs by
13 reason of Defendants’ unlawful acts of patent infringement; that the amount of recovery be
14 increased as provided by law, up to three times; and that interest be awarded to Plaintiffs;
15 6. For a declaration that this is an exceptional case and an award of reasonable
16 attorneys’ fees pursuant to 35 U.S.C. § 285;
17 7. For a judgment that Catino and MedFix have falsely designated the origin of
18 Plaintiffs’ or Syntec’s goods in violation of 15 U.S.C. § 1125(a);
19 8. For a judgment that Catino and MedFix engaged in unfair competition in
20 violation of Arizona’s common law of unfair competition;
21 9. For a judgment that Catino and MedFix willfully violated 15 U.S.C. 1125(a)
22 and willfully committed acts of unfair competition;
23 10. For an entry of preliminary and permanent injunctive relief restraining and
24 enjoining Catino and MedFix, and all of its agents, successors, and assigns, and all persons
25 in active concert or participation with any of them, from falsely designating the origin of
26 Plaintiffs’ or Syntec’s goods and from committing acts of unfair competition;
27 11. For an order requiring Catino and MedFix to deliver to Plaintiffs all articles
28 that were used in violation of 15 U.S.C. 1125(a), pursuant to 15 U.S.C. § 1118;
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1 12. For an award to Plaintiffs of all profits, sums and gains received by Catino and
2 MedFix of any kind made as a result of Catino’s and MedFix’s unfair competition and false
3 designation of origin, pursuant to 15 U.S.C. § 1117 and common law;
4 13. For an award of all damages sustained by Plaintiffs by reason of Catino’s and
5 MedFix’s acts of unfair competition and false designation of origin, pursuant to 15 U.S.C. §
6 1117 and common law;
7 14. For an award to Plaintiffs of three times the amount of Catino’s and MedFix’s
8 profits and Plaintiffs’ reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(b) and/or
9 punitive damages pursuant to common law;
10 15. For a declaration that this is an exceptional case and an award of reasonable
11 attorneys’ fees pursuant to 15 U.S.C. § 1117(a);
12 16. That Plaintiffs be awarded their reasonable costs; and
13 17. That Plaintiffs have such other and further legal or equitable relief as the Court
14 may deem necessary or appropriate.
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1 DEMAND FOR JURY TRIAL

2 Plaintiffs hereby demand a trial by jury for each and every issue so permitted by law
3 and statute.
4 RESPECTFULLY SUBMITTED this 18th day of December, 2009.
5 QUARLES & BRADY LLP
One South Church Avenue, Suite 1700
6 Tucson, AZ 85701
7
8 By s/Deanna Conn
Deanna Conn
9
Attorneys for Plaintiffs
10 Synthes USA, LLC and Synthes USA Sales,
LLC
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Case 4:09-cv-00711-DCB Document 1 Filed 12/18/09 Page 1 of 14

1 Deanna Conn, Esq. (AZ SB No. 015676)

17 Synthes USA, LLC, a Delaware limited ) Case No. _______________

1 10. Upon information and belief, Defendant Catino is an individual residing at

1 persons acting in concert or in participation with Defendants, be enjoined during the

1 DEMAND FOR JURY TRIAL

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