Case 1:16-cv-00272 Document 1 Filed 03/04/16 Page 1 of 8

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION

CIVIL ACTION NO. 1:16-CV-272

DIAMOND 6S MANAGEMENT, LLC

D/B/A ECOBOX; DIAMOND 6S
MANUFACTURING, LLC

PLAINTIFFS,
V.
VICTORY PACKAGING, L.P.; AND
VICTORY PACKAGING
MANAGEMENT LLC

DEFENDANT.

PLAINTIFFS ORIGINAL COMPLAINT

Plaintiffs Diamond 6S Management, LLC d/b/a Ecobox and Diamond 6S Manufacturing,
LLC (collectively EcoBox or Plaintiffs) files this Original Complaint for Patent Infringement
(Complaint) seeking injunctive and compensatory relief against

Defendants Victory

Packaging, L.P. and Victory Packaging Management, LLC (collectively Victory or

Defendants) for infringement of U.S. Patent Nos. D661,191 and D660,702 (the Patent-inSuit). In support of its Complaint, EcoBox shows as follows:
I.
1.

PARTIES

Diamond 6S Management, Inc. d/b/a EcoBox is an entity organized and existing

under Texas law with its principal place of business located at 3816 Binz Engleman Rd., Ste.
B101.
2.

Diamond 6S Manufacturing, Inc. d/b/a EcoBox Franchise Corp. is an entity

organized and existing under Texas law with its principal place of business located at 3816 Binz
PLAINTIFFS ORIGINAL COMPLAINT
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Engleman Rd., Ste. B101.

3.

Victory Packaging, L.P. is, upon information and belief, a corporation organized

and existing under Texas law. Defendant may be served with process through its registered
agent, Corporation Service Company d/b/a CSC-Lawyers Incorporating Service Company, 211
E. 7th Street, Suite 620, Austin, Texas 78701, through expedited delivery service, certified or
registered mail (return receipt requested), first-class mail.
4.

Victory Packaging Management LLC is, upon information and belief, a

corporation organized and existing under Texas law. Defendant may be served with process
through its registered agent, H. Benjamin Samuels, 3555 Timmons Lane, Ste. 1440, Houston,
Texas 77027, through expedited delivery service, certified or registered mail (return receipt
requested), first-class mail.
II.
5.

JURISDICTION AND VENUE

This action arises under the patent laws of the United States, 35 U.S.C. 101 et

seq. This Court has original and exclusive jurisdiction over the subject matter of the Complaint
pursuant to 28 U.S.C. 1331 and 1338(a).
6.

This Court has personal jurisdiction over Defendants in that they have committed

acts within Texas and the Western District of Texas giving rise to this action. As set forth in this
Complaint, Defendants have purposely transacted business involving their accused products in
this judicial district by providing products for sale through online and retail stores in the State of
Texas and Western District of Texas that infringe on the Patent-in-Suit.
7.

Venue is proper in this district under section 28 U.S.C. 1391 (b)-(c) and

1400(b). Further, venue is proper in this district under 28 U.S.C. 1391(a)(2), as a substantial
part of the events or omissions giving rise to the claims herein occurred in this judicial district.

PLAINTIFFS ORIGINAL COMPLAINT

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III.
8.

FACTUAL BACKGROUND

The 191 patent entitled Polyethylene Foam Block was duly and legally issued

by the United States Patent and Trademark Office on June 5, 2012, after full and fair
examination. A copy of the 191 patent is attached hereto as Exhibit A.
9.

The 191 patent provides for the design of a television edge protector designed to

secure and protect a flat screen television during transport.

10.

The 702 patent entitled Polyethylene Foam Block was duly and legally issued

by the United States Patent and Trademark Office on May 29, 2012, after full and fair
examination. A copy of the 702 patent is attached hereto as Exhibit B.
11.

The 702 patent provides for the design of a television edge protector designed to

secure and protect a flat screen television during transport.

12.

At all times relevant hereto, Ecoboxs products have been marked with the 191

and/or 702 Patent numbers.

13.

EcoBox has owned the Patents-in-Suit throughout the period of Defendants

infringing acts and still owns the patent. EcoBox is the sole owner of all rights, title, and interest
in the Patents-in-Suit, and possesses all rights of recovery, including the right to recover all past
damages under the Patents-in-Suit.
14.

Defendants provide packaging design, creation, delivery, storage, and

management

to

its

customers.

Defendants

do

business

at

the

website

https://www.victorypackaging.com/en/.
15.

Recently, and subsequent to the issuance of the 191 and 702 and Patents,

Defendants embarked upon a systematic, organized and damaging course of conduct directed to
the duplication and copying Ecoboxs Polyethylene Foam Block. Defendants have, in fact,

PLAINTIFFS ORIGINAL COMPLAINT

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copied and are offering for sale, and selling, unauthorized replications of Ecoboxs Polyethylene
Foam Block.
16.

Among Defendants customers is U-Haul of Texas and U-Haul International

(collectively U-Haul). Defendants provide to U-Haul television edge protectors that are
identical to or substantially equivalent to the claims in the Patent-in-Suit. U-Haul does business
at the website www.uhaul.com and its infringing products can be purchased within the Western
District of Texas.
17.

Defendants directly ship, distribute, offer for sale, and (through U-Haul) sell and

advertise their infringing products and/or services in the United States, including within the State
of Texas and the Western District of Texas.
18.

Upon information and belief, Defendants have sold the infringing television edge

protectors to customers located in the Western District of Texas.

19.

Specifically, Defendants directly ship, distribute, offer for sale, and (through U-

Haul) sell and advertise television edge protectors that are identical to or substantially equivalent
to the claims in the Patent-in-Suit.
20.

This illegal conduct by Defendants has no other purpose than to trade on the

reputation and recognition by the purchasing public of Ecoboxs Polyethylene Foam Block.
These activities by Defendants are damaging Ecoboxs reputation in the marketplace and causing
harm to Ecobox.
IV.

CAUSES OF ACTION

COUNT I INFRINGEMENT OF PATENT NO. D661,191.

21.

EcoBox realleges and incorporates by reference paragraphs 1-14 as if fully set

forth herein.

PLAINTIFFS ORIGINAL COMPLAINT

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22.

Defendants have infringed, literally and/or under the doctrine of equivalents, and

continue to directly infringe the claim of the 191 patent by, among other things, making,
manufacturing, importing, offering for sale, selling, and using television edge protectors with a
design covered by the 191 patent that are substantially similar to and infringe the 191 patent in
violation of 35 U.S.C. 271.
23.

Defendants manufacture and sell television edge protectors. Some of the

television edge protectors manufactured and/or sold by Defendants infringe the 191 patent,
including the following products:
(i)
24.

Flat Panel TV Kit

Plaintiffs remedy by civil action for infringement is provided by 35 U.S.C. 281

and 289.
25.

Prior to the filing of this action, Plaintiff complied with 35 U.S.C. 287 by

placing a notice of the 191 patent on the television edge protectors it manufactures and sells.
26.

EcoBox has been damaged as a result of Defendants infringing conduct.

Defendants are, therefore, liable to EcoBox in an amount that adequately compensates it for
Defendants infringements, which, by law, cannot be less than a reasonable royalty, together
with interest and costs as fixed by this Court under 35 U.S.C. 284 or disgorgement of
Defendants profits as provided under 35 U.S.C. 289.
27.

Defendants infringement of the 191 patent is willful and deliberate, making this

case exceptional pursuant to 35 U.S.C. 285 and justifying treble damages by 35 U.S.C. 284.
28.

If it is determined that this case presents exceptional circumstances within the

meaning of 35 U.S.C. 285, EcoBox requests the Court to award it all reasonable attorneys fees
and costs incurred in this litigation and pre-judgment and post-judgment interest pursuant to 35

PLAINTIFFS ORIGINAL COMPLAINT

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U.S.C. 284 and 285.

COUNT II INFRINGEMENT OF PATENT NO. D660,702.
29.

EcoBox realleges and incorporates by reference paragraphs 1-24 as if fully set

forth herein.
30.

Defendants have infringed, literally and/or under the doctrine of equivalents, and

continue to directly infringe the claim of the 702 patent by, among other things, making,
manufacturing, importing, offering for sale, selling, and using television edge protectors with a
design covered by the 702 patent that are substantially similar to and infringe the 702 patent in
violation of 35 U.S.C. 271.
31.

Defendants manufacture and sell television edge protectors. Some of the

television edge protectors manufactured and/or sold by Defendants infringe the 702 patent,
including the following products:
(i)
32.

Flat Panel TV Kit

Plaintiffs remedy by civil action for infringement is provided by 35 U.S.C. 281

and 289.
33.

Prior to the filing of this action, Plaintiff complied with 35 U.S.C. 287 by

placing a notice of the 702 patent on the television edge protectors it manufactures and sells.
34.

EcoBox has been damaged as a result of Defendants infringing conduct.

Defendants are, therefore, liable to EcoBox in an amount that adequately compensates it for
Defendants infringements, which, by law, cannot be less than a reasonable royalty, together
with interest and costs as fixed by this Court under 35 U.S.C. 284 or disgorgement of
Defendants profits as provided under 35 U.S.C. 289.
35.

Defendants infringement of the 702 patent is willful and deliberate, making this

PLAINTIFFS ORIGINAL COMPLAINT

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case exceptional pursuant to 35 U.S.C. 285 and justifying treble damages by 35 U.S.C. 284.
36.

If it is determined that this case presents exceptional circumstances within the

meaning of 35 U.S.C. 285, EcoBox requests the Court to award it all reasonable attorneys fees
and costs incurred in this litigation and pre-judgment and post-judgment interest pursuant to 35
U.S.C. 284 and 285.
V.
37.

JURY DEMAND

Plaintiff hereby requests a trial by jury pursuant to Federal Rule of Civil

Procedure 38.
VI.
38.

CONDITIONS PRECEDENT

All conditions precedent to recovery sought herein have been met by Plaintiff or

waived by Defendant.
VII.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff EcoBox respectfully requests that this Court enter a judgment in
its favor and against Defendants as follows:
1.

A permanent injunction against Defendants, enjoining them, their respective

directors, officers, agents, employees, successors, subsidiaries, assigns, and all persons acting in
privity, concert, or participation with Defendants, from making, using, selling, or offering for
sale in the United States, or importing into the United States, any and all products and/or services
embodying the patented inventions claimed in the Patent-in-Suit;
2.

Damages for infringement of EcoBoxs 191 patent pursuant to 35 U.S.C. 281,

284 and 289;

3.

Damages for infringement of EcoBoxs 702 patent pursuant to 35 U.S.C. 281,

284 and 289;

PLAINTIFFS ORIGINAL COMPLAINT

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4.

Enhanced damages for willful infringement, pursuant to 35 U.S.C. 284;

5.

Pre-judgment and post-judgment interest at the highest legal maximum rate;

6.

Costs, expenses, and fees, including reasonable and necessary attorneys fees,

pursuant to 35 U.S.C. 285;

7.

Payment of costs of suit herein incurred pursuant to, inter alia, 35 U.S.C.

297(b)(1);
8.

Other relief to which Plaintiff EcoBox may be entitled at law or in equity,

whether pleaded or not.

Respectfully submitted,
By: /S/ Paul V. Storm
Paul V. Storm
Texas Bar No. 19325350
J. Michael Thomas
Texas Bar No. 24066812
1601 Elm Street
3000 Thanksgiving Tower
Dallas, Texas 75201
Telephone: (214) 999-3000
Telecopier: (214) 999-4667
pvstorm@gardere.com
mthomas@gardere.com
ATTORNEYS FOR PLAINTIFFS

PLAINTIFFS ORIGINAL COMPLAINT

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United States Design Patent

(r2)

Malone

iro Patent No.:

1+s Date of Patent:

(s4) POLYETHYLENEFOAMBLOCK

Assignee: EcoBox Franchise Corporation' Inc.,

Austin, TX (uS)

(**) Term:

14 Years

(21)

Appl. No.: 291406,069

(22)

Filed:

Malone, Dale, U.S. Patent Application entitled 'A Polyethylene

Foam Block in the Shape of a U to Protect Items when Moving or
Shipping," U.S. Appl. No. 29,396,083, filed Jun. 24,2011.

* cited by examiner
Primary Examizer

Susan Bennett Hattan

Q4) Attorney, Agent,

or Firm-Robert A.

Voigt,

Jr.;

Winstead P.C.

09-07

Cr.

D9t456

Field of Classification Search

D91456,
D9 I 45 5, 434; D31328, 31.9, 373, 295, 294,
D3 1273,

4281

See application le

l4l;

410ll54;

20617 11, 7 1.0

for complete search history.

References Clted

(s6)

U.S. PATENTDOCUMENTS

6/1909

t,5r6,72t A
1,894,605 A

ll/1924

D281,308
D335,083

I l/1985

S
S

(s7)

CLAIM

The ornamental design for this polyethylene foam block, as

shown and described.

203.8, 203.6, 203.1, 2Ol ; D25/ 141,

1 7 5, ll 4, 1 13; 4281 t 52, 150,

D251 125, 123,

926,148

Jun.5,2012

Nov 9,2011

(sl) LOC (e)

(s2) u.s. cl.
(58)

**

OTHER PUBLICATIONS

(75) Inventor: Dale Malone, Austin, TX (US)

(73)

us D661,191 S

Sullivan
Emery

470/19

1/1933 Wright
Bussey,

174/72C

Jr.

.....

41t993 Russell et al.

446/r22
,,,'''',,,,., D9/456
.,,..,,,.,,., D9/456

5,4U,96t A

t/1996 Itoh et al. ....... .......... r74/84C

D380,680

S
D397,2',70 S

7/1997 Sun .,..,...........

8/1998 Maalouf ........

6,053,751 A
D563,787 S

4/2000 Humphrey .....

3/2008 Hawey et al. .. ,',,,''',',,, D91456

...,..,...... D9/456
...,.....,... D6/601
............439/108

DESCRIPTION
FIG, 1 is a front perspective view of the polyetlene foam
block;
FIG, 2 is an isometric perspective view of a side of the
polyetlene foam block;
FIG. 3 is a rear perspective view of the polyetlene foam
block;
FIG. 4 is a top perspective view of the polyetlene foam
block;
FIG. 5 is a side perspective view of the polyethylene foam
block; and,
FIG. is a bottomperspective view ofthe polyethylene foam
b1ock.

Claim, 5 Drawlng Sheets

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UNITED STATES PATENT AND TRADEMARK OFFICE

CERTIFICATE OF CORRECTION
PATENTNO.
APPLICATIONNO.
DATED

: D661,191 S

TNVENTOR(S)

: Dale Malone

Page 1

:291406069
: June 5,2012

It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shown below:

Title Page:

Item73
Please replace the name of the assignee from'oEcoBox Franchise Corporation, Inc." to

--Eco Box Franchise Corporation--.

Please replace the residence of the assignee from

"Austirl Texas" to --San Antonio, Texas--.

Signed and Sealed this

Twenty-third Day of February, 2016

V*Li*t/, k ,{*
Michelle K. Lee
Director of the United States Patent and Trademark Ofice

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United States Design Patent

Malone

(54)

POLYETHYLENE FOAM BLOCK

(75) Inventor: Dale Malone, Austin,

(73)

D380,680
D397,270
6,053,751
D563,787

TX CJS)

Primary Examlzer

(22)

Filed:

(s7)

LOC (e) Cl.

(s2) u.s. cl.

7/t997 Sun..,,..........,.

D9/456

8/1998 Maalouf ........

4/2000 Humphrey .....
3/2008 Harveyetal...

4391t08

D6/601
D91456

Susan Bennett Hattan

or Frm-Robert A,

Voigt,

Jr.;

09-07

(s8)

Field of Classlfication Search

Dgl 455, 434; D31328,

428ll4l; 4l0ll54

FIG. 2 is a front perspective view of a side of the polyethylene

foam block;
FIG. 3 is a side perspective view of the polyethylene foam

file for complete search history.

block;

References Cited

FIG. 4 is a bottom perspective view ofthe polyethylene foam

block; and,
FIG. 5 is a top perspective view of the polyethylene foam

U.S. PATENT DOCUMENTS

A*
A*

s*
s*
A*

6/1909 Sullivn

DESCRIPTION
FIG. I is a front perspective view of the polyethylene foam
block;

ll3;

(56)

as

l4l,

31 9, 313, 295, 294,

D31273, 203.8, 203.6, 203.1, 2Ol; D25/
4281152, l5O,
D251125, 123,115,114,

See application

cr"alM

shown and described.

D9t456
D9/456,

I,894,605
D281,308
D335,083
5,484,961

M.ay 29,2412

The omamental design for a polyethylene foam block,

Jtu:n.24,2011

(51)

**

Winstead P.C.

Appl. No.: 291396,083

926,f48

*
*
*
*

Q4) Attornqt, Agent,

14 Years

(21)

I,5t6,72t

S
S
A
S

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* cited by examiner

Assignee: EcoBox f,'ranchise Corporatlon, LLC,

Austin, TX (US)

(**) Term:

Patent No.:
1+s Date of Patent:
1ro;

tt/ t924

174/72 C
. 470119

tl1933

446/122

I l/1985

D9/456

4/t993

D91456

l/t996

174/84 C

block.
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