Case 2:15-cv-00155 ECF No. 1 filed 10/29/15 Page 1 of 6 PageID.

UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF MICHIGAN
LACEY, INC.,
Declaratory Judgment Plaintiff
v.
UNI INDUSTRIES, INC.,

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DECLARATORY JUDGMENT COMPLAINT

FOR PATENT INVALIDITY AND NONINFRINGEMENT
Introduction
1.

Plaintiff, Lacey, Inc. (Lacey), brings a declaratory judgment action under 28 USC

2201 against Defendant, UNI Industries, Inc. (UNI), for a declaration under the patent laws of
the United States, Title 35 USC 100 et seq., that UNI Industries, Inc. ornamental design patent
U.S. D708,026 (Ex. 1) is invalid and not infringed by Lacey, Inc.
The Parties
2.

Lacey, Inc. is a corporation of the State of Michigan having a place of business at

9860 Cherry Valley Avenue, S.E., Caledonia, MI 49316-9521.

3.

UNI Industries, Inc., upon information and belief, is a corporation of the State of

New York having a place of business in Wolcott, NY.

Jurisdiction and Venue

4.

This Court has jurisdiction over this matter under the Declaratory Judgment Act,

Title 28, 2201 and 2202, the Patent Laws of the United States, Title 35 USC 100 et. seq. and
Title 28 USC 1338, there being an actual and continuing controversy between the parties based
on UNIs assertion and threats that Lacey infringes UNIs ornamental design patent U.S. D708,026

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(Ex. 1), and Laceys assertion that said ornamental design patent is invalid and not infringed by
Lacey.
5.

This Court has personal jurisdiction over UNI which, upon information and belief,

does business in this district, offering its products for sale to prospective customers in the Western
District of Michigan.
6.

Venue is proper in this district under 28 USC 1391 (b), (c) and 1400 (b).

7.

UNI Industries, Inc. has accused Lacey, Inc. of infringing its United States

Facts

ornamental design patent D708,026 in a letter dated August 14, 2015 from Dennis J. Sullivan,
attorney for UNI Industries, Inc. (Ex. 2). In the Exhibit 2 letter, attorney Sullivan threatens
litigation, stating that,
It is UNIs policy to vigorously enforce its exclusive rights in its products. Accordingly,
UNI hereby demands that Lacey, Inc. take steps to phase out the sale of the Lacy Mat Products to
reduce or eliminate inventory by December 1, 2015 and agree to pay a reasonably royalty on
products sold since July 1, 2014, and respond to us on this issue in writing by September 11, 2015.
If we do not receive a response by that date, we will assume that Lacey, Inc. plans to continue its
infringing behavior.
8.

Specifically, UNI has asserted that Laceys LakeMat-Pro, MuckMat-Pro and

BoatLift-Mat infringe UNIs ornamental design patent.

9.

UNIs counsel states in his August 14, 2015 letter:

Our clients Water Weed Mat has achieved great commercial success based, in
large part, on its picture frame design around the perimeter of the mat that
provides superior performance to other seaweed mats.

10.

UNIs counsel goes on to state:

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On July 1, 2014, the United States Patent & Trademark Office issues U.S.
ornamental design patent D708,026, entitled Underwater Weed Tarp
(attached), protecting the picture frame design of the Water Weed Mat.
11.

UNIs Exhibit 1 patent application was filed on May 30, 2012.

12.

UNI is not the first to employ a perimeter frame around a mat. In the spring of 2011,

Lacey developed perimeter frames for its LakeMats, MuckMats and BoatLift-Mats. On May
23, 2012, Lacey took photographs of its perimeter frame and perimeter frame mat (Ex. 3).
13.

In addition to the prior invention and development by Lacey, Inc., additional prior

art is attached as Exhibit 4 to this Complaint. None of this prior art was considered by the Patent
Office Examiner in granting the 026 patent.
14.

The frame design disclosed in the UNI 026 ornamental design patent includes a

central cross piece (Figs 3 and 4). Laceys perimeter frame mats never included a central cross
piece.
15.

Laceys mats as currently made include outwardly bowed frame members, and use

a corner treatment which is distinctly different from that shown in the UNI 026 ornamental design
patent.
16.

Figures taken from the UNI 026 ornamental design patent compared to figures

drawn showing the Lacey frames are attached as Exhibit 5.

17.

Lacey is threatened by the assertions of UNI through its counsel in the Exhibit 1

letter of August 14, 2015.

18.

Lacy. is injured and continues to be injured as a result of having to defend itself

against the assertions and threats made by UNI in its August 14, 2015 letter.

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19.

There is a substantial and continuing controversy between UNI and Lacey, Inc. and

a declaration of rights is both necessary and appropriate to establish that the UNI 026 ornamental
design patent is invalid and not infringed by Lacey, Inc.
COUNT I
DECLARATORY JUDGMENT FOR INVALIDITY
OF UNI ORNAMENTAL DESIGN PATENT D708,026
FOR FUNCTIONALITY
20.

The foregoing paragraphs 1-19 are incorporated herein by reference.

21.

The design patent statute provides that a design patent may be granted for any new,

original and ornamental design for an article of manufacture. 35 USC 171

22.

A design patent protects only the nonfunctional aspects of an ornamental design as

shown in a patent.
23.

The UNI patented design is primarily functional, rather than ornamental.

24.

UNI admits that its ornamental picture frame design is primarily functional when

it asserts that its water weed mat has achieved great commercial success based, in large part, on
its picture frame design around the perimeter of the mat that provides superior performance to
other seaweed mats.
25.

The UNI 029 ornamental design patent is invalid for functionality.

COUNT II
INVALIDITY OVER THE PRIOR ART

26.

The above paragraphs 1-19 are incorporated herein by reference.

27.

UNIs ornamental design patent 026 is a pre-AIA patent, in that it was filed on

May 30, 2012.

28.

As a pre-AIA patent, the UNI 026 ornamental design patent is invalid over Laceys

prior invention thereof under pre-AIA 35 USC 102(g).

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29.

The UNI ornamental design patent is invalid over prior art disclosing perimeter

framed mats more than one year prior to the May 30, 2012 filing date thereof, under 35 USC
102(b) or 103.
COUNT III
NONINFRINGEMENT OF THE 026 ORNAMENTAL DESIGN PATENT
30.

Prior paragraphs 1-19 are incorporated herein by reference.

31.

The test for determining infringement of an ornamental design patent is whether, in

the eye of an ordinary observer, giving such attention as a purchaser usually gives, the patented
and accused designs, as a whole, are substantially the same, and the resemblance is such as to
deceive the observer, inducing him or her to purchase one supposing it to be the other.
32.

As indicated in paragraphs 14-16 above, and in Exhibit 5, Laceys mats are not

substantially the same as UNIs 026 patented design.

33.

Laceys mats do not infringe the UNI 026 ornamental design patent.
PRAYER FOR RELIEF

WHEREFORE, Lacey respectfully requests that the Court enter judgement as follows:
A.

declaring that the 026 ornamental design patent is invalid for functionality;

B.

declaring that the 026 ornamental design patent is invalid under 35 USC 102 or

C.

declaring that the Lacey accused mats do not infringe the UNI 026 ornamental

103;

design patent;
D.

awarding Lacey its costs, expenses and reasonable attorneys fees pursuant to 35

USC 285;
E.

awarding Lacey such other relief that the Court deems just and proper under the

circumstances.
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Respectfully submitted,

Date: 10/29/2015
James A. Mitchell
Amanda M. Osorio
MITCHELL INTELLECTUAL PROPERTY LAW, PLLC
1595 Galbraith Avenue, S.E.
Grand Rapids, MI 49546
(616) 965-2431

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Exhibit 3

May 23, 2012 Photo of the Perimeter Frame, with Boatlift Mat Fabric temporarily attached. Photo
below, taken summer of 2012, shows our Perimeter Frame without material attached.

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Exhibit 4
Examples of Prior Art (pre 2012)
U.S. Army Corps of Engineers 2011 or earlier
The U.S. Army Corps of Engineers and Tahoe Divers Conservancy
clean a weed barrier from Martis Creek Lake in Truckee, Calif., during
an annual removal, cleaning and replacement project May 19, 2012.

Annual cleaning of benthic barrier, May 19, 2012

Meaning the mats were placed in 2011 or earlier.

Klekotas patent drawing

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Cornell University, New York 2010

From Cornells Benthic Barrier guide.

In the publication, Cornell suggests using rebar

as a frame for future projects.

Cornell University 2010 or earlier

Photos from a Cornell publication, Instructions for Building a Benthic Barrier
illustrate how to build Mr. Klekotas invention using a wood frame, two years or
more before he applied for a patent.
The publication comes from Cornells Cooperative Extension in Syracuse, home
of Klekotas attorneys office, just 40 miles from Klekotas residence.
The drawing below (which also appears in an earlier New York State publication)
is found in this Cornell guide.

From Cornells Benthic Barrier guide.

Klekotas patent drawing

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Seattle, Washington 2010 (2002?)

A company from Seattle, Aquatic Weed Control, says on its website
theyve been controlling lake weeds this way for eight years.
The website lists pricing for the year 2010, so this would put their
use of Klekotas design well before that, perhaps as early as 2002.

From: Aquatic Weed Control website 2010

http://www.awc-america.com/ Photo Gallery

Klekotas patent drawing

Klekotas patent drawing (tilted)

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Washington State 1998

Volunteers assemble and install a picture frame style benthic barrier at
Lake Leland, in Washington State in 1998 a full 16 years before
Klekotas patent was issued.

These volunteers discovered the

original rebar frame was too
flexible. Their remedy was to
augment the frame with aluminum
tubing.

From: http://www.ecy.wa.gov/programs/wq/plants/
management/leland.html

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New York State 2009 (1990?)

Diet For A Small Lake is a book that was published by the State of New
Yorks Department of Environmental Conservation. It was published in 1990
and updated in 2009. The book is an iconic resource of lake management
techniques, first published 25 years ago.

Diet for a Small Lake is a combined effort

by the New York State Federation of Lake
Associations (NYSFOLA) and New York
State Department of Environmental
Conservation.
NYSFOLA is comprised of over 200 Lake
Associations in New York State.
In New York State, it would be difficult to
live on a lake, or create lake products
without coming across the classic, Diet for
a Small Lake.

This benthic barrier image appears on

page 131, of Diet for a Small Lake, (2009
edition) with detailed instructions on how
to build it with a wooden frame. The image
may or may not been in the 1990 edition.

Placed beside Klekotas patent

drawing of 2012, the resemblance
(and identical usage) is
unmistakable and undeniable.

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EXHIBIT 5

Figure 3

Figure 4

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