Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 1 of 11 PageID #: 249
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF KENTUCKY
`AT BOWLING GREEN
`
`SUN STYLE INTERNATIONAL, LLC,
`
`CASE NO. 1:12-cv-00179-TBR
`
`Plaintiff/Counterclaim Defendant,
`
`Judge Thomas B. Russell
`
`v.
`
`SUNLESS, INC.,
`
`Defendant/Counterclaim Plaintiff.
`
`SUNLESS, INC.’S FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO SUN STYLE INTERNATIONAL, LLC’S COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`Defendant Sunless, Inc. (“Sunless”) answers the Complaint in the above-referenced
`
`action filed on October 18, 2012 by Plaintiff Sun Style International, LLC (“SSI”) as follows:
`
`1.
`
`Sunless lacks sufficient information to admit or deny the allegations in paragraph
`
`PARTIES
`
`1, and on that basis, denies them.
`
`2.
`
`Sunless admits that it is a Delaware corporation with a principal place of business
`
`at 8909 South Freeway Drive, Macedonia, Ohio. Sunless admits it does business within the
`
`Western District of Kentucky, and that it provides sunless tanning equipment to independent
`
`tanning salons throughout the United States. Sunless denies the remaining allegations in
`
`paragraph 2.
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`JURISDICTION AND VENUE
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`3.
`
`Sunless admits the allegations in paragraph 3.
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`- 1 -
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`
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF KENTUCKY
`AT BOWLING GREEN
`
`SUN STYLE INTERNATIONAL, LLC,
`
`CASE NO. 1:12-cv-00179-TBR
`
`Plaintiff/Counterclaim Defendant,
`
`Judge Thomas B. Russell
`
`v.
`
`SUNLESS, INC.,
`
`Defendant/Counterclaim Plaintiff.
`
`SUNLESS, INC.’S FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIMS TO SUN STYLE INTERNATIONAL, LLC’S COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`Defendant Sunless, Inc. (“Sunless”) answers the Complaint in the above-referenced
`
`action filed on October 18, 2012 by Plaintiff Sun Style International, LLC (“SSI”) as follows:
`
`1.
`
`Sunless lacks sufficient information to admit or deny the allegations in paragraph
`
`PARTIES
`
`1, and on that basis, denies them.
`
`2.
`
`Sunless admits that it is a Delaware corporation with a principal place of business
`
`at 8909 South Freeway Drive, Macedonia, Ohio. Sunless admits it does business within the
`
`Western District of Kentucky, and that it provides sunless tanning equipment to independent
`
`tanning salons throughout the United States. Sunless denies the remaining allegations in
`
`paragraph 2.
`
`JURISDICTION AND VENUE
`
`3.
`
`Sunless admits the allegations in paragraph 3.
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`- 1 -
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 2 of 11 PageID #: 250
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`4.
`
`Sunless admits that Sun Style has made an allegation that
`
`the Court has
`
`jurisdiction over the instant action pursuant to 28 U.S.C. § 2201(a), but denies the remaining
`
`allegations in paragraph 4.
`
`5.
`
`Sunless admits that it conducts business within this judicial district. Sunless
`
`reserves the right to seek a more convenient venue pursuant to 28 U.S.C. § 1404, and denies the
`
`remaining allegations in paragraph 5.
`
`GENERAL ALLEGATIONS
`
`6.
`
`Sunless lacks sufficient information to admit or deny the allegations in paragraph
`
`6, and on that basis, denies them.
`
`7.
`
`Sunless admits that it is, among other things, in the business of providing sunless
`
`tanning equipment, supplies, and services to independent tanning salon owners throughout the
`
`United States, including, but not limited to tanning salons located within the Western District of
`
`Kentucky. Sunless denies the remaining allegations in paragraph 7.
`
`8.
`
`9.
`
`Sunless admits the allegations in paragraph 8.
`
`Sunless admits that it sent, through counsel, a letter to Ed Jerger, Executive
`
`Chairman of Four Seasons Sales and Services, Inc. (“Four Seasons”) on October 3, 2012.
`
`Sunless admits that the letter stated that it had come to Sunless’s attention that Four Seasons was
`
`attempting to enter the professional sunless tanning equipment market, and that Sunless is the
`
`owner of the patent rights described in the ‘288 patent, which has been commercialized by
`
`Sunless in the form of its VersaSpa booth. Sunless denies the remaining allegations of paragraph
`
`9.
`
`10.
`
`Sunless denies the allegations in paragraph 10.
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`- 2 -
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 3 of 11 PageID #: 251
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`ACTION FOR DECLARATORY JUDGMENT
`OF PATENT INVALIDITY AND NON-INFRINGEMENT
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`11.
`
`Sunless
`
`incorporates by reference herein its
`
`responses
`
`to the foregoing
`
`paragraphs.
`
`12.
`
`13.
`
`14.
`
`Sunless denies the allegations in paragraph 12.
`
`Sunless denies the allegations in paragraph 13.
`
`Sunless lacks sufficient information to admit or deny whether Plaintiff is aware of
`
`any industry standard in the nozzle industry for the specifications of volume output and pressure
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`range for an HVLP nozzle, and on that basis, denies this allegation. Sunless denies the remaining
`
`allegations in paragraph 14.
`
`15.
`
`Sunless denies the allegations in paragraph 15.
`
`RESPONSE TO DEMAND
`
`Sunless denies that SSI is entitled to any of the relief requested in its demand.
`
`AFFIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`SSI fails to state a claim upon which relief can be granted.
`
`Second Affirmative Defense
`
`There is no declaratory judgment jurisdiction because there was no case or controversy
`
`between the parties at the time SSI filed its Complaint, and SSI’s Complaint constitutes an
`
`anticipatory suit.
`
`Third Affirmative Defense
`
`The patent in suit is valid and enforceable under United States Patent laws.
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`- 3 -
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 4 of 11 PageID #: 252
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`Fourth Affirmative Defense
`
`SSI is not entitled to any form of relief.
`
`Sunless has insufficient knowledge or information upon which to form a belief as to
`
`whether it may have additional, as yet unstated, affirmative defenses available, and based
`
`thereon, it reserves the right to assert any such affirmative defenses in the event that discovery
`
`indicates that they are appropriate.
`
`COUNTERCLAIMS
`
`Defendant/Counterclaim Plaintiff Sunless,
`
`Inc.
`
`(“Sunless”) asserts
`
`the following
`
`Counterclaims against Plaintiff/Counterclaim Defendant Sun Style International, LLC (“SSI”):
`
`THE PARTIES
`
`1.
`
`Sunless is a corporation organized and existing under the laws of the state of
`
`Delaware with a principal place of business at 8909 South Freeway Drive, Macedonia, Ohio
`
`44056.
`
`2.
`
`Based on allegations in the Complaint, SSI is a Kentucky limited liability
`
`company having its principal place of business at 2350 Lakeway Circle, Paris, Tennessee 38242.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction over these Counterclaims under 28
`
`U.S.C. §§ 1331, 1338, 1367, 2201 and 2202.
`
`4.
`
`This Court has general personal
`
`jurisdiction over Defendant because it has
`
`subjected itself to the jurisdiction of this Court by bringing the Complaint in this case. For the
`
`same reasons, venue is proper in this judicial district.
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`- 4 -
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 5 of 11 PageID #: 253
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`BACKGROUND FACTS
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`5.
`
`Sunless is a leader in the development, manufacture, and marketing of sunless
`
`tanning products, including equipment and solutions.
`
`6.
`
`On June 19, 2012, the United States Patent and Trademark Office (“USPTO”)
`
`duly and legally granted U.S. Patent No. 8,201,288 for an invention entitled “Automatic Body
`
`Spray System” (“the ‘288 patent”). A true and correct copy of the ‘288 patent is attached hereto
`
`as Exhibit A.
`
`7.
`
`8.
`
`SSI has had actual notice of the ‘288 patent since at least October 3, 2012.
`
`On October 1, 2013, the USPTO duly and legally granted U.S. Patent No.
`
`8,545,461 for an invention entitled “Automatic Body Spray System Excess Liquid Removal”
`
`(“the ‘461 patent”). A true and correct copy of the ‘461 patent is attached hereto as Exhibit B.
`
`9.
`
`Sunless is the owner of the entire right, title, and interest in and to the ‘288 patent
`
`by assignment from its predecessor, MT Industries, Inc. Sunless has commercialized the ‘288
`
`patent by making and selling its own products, which are covered by one or more claims of the
`
`‘288 patent, including the VersaSpa booth.
`
`10.
`
`Sunless is the owner of the entire right, title, and interest in and to the ‘461 patent
`
`by assignment. Sunless has commercialized the ‘461 patent by making and selling its own
`
`products, which are covered by one or more claims of the ‘461 patent, including the VersaSpa
`
`booth.
`
`11.
`
`SSI has made, used, offered to sell, and sold in the United States an automatic
`
`body spray system, identified as the Sun Style Booth.
`
`12.
`
`Upon information and belief, SSI obtained a VersaSpa booth and copied the
`
`design of several elements, including without limitation, the nozzles, fan, solution container, and
`
`container connector, and incorporated these features in the Sun Style Booth.
`
`- 5 -
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 6 of 11 PageID #: 254
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`13.
`
`SSI has directly infringed and is now infringing the ‘288 patent and the ‘461
`
`patent by making, using, offering to sell, and selling the Sun Style Booth in the United States.
`
`14.
`
`SSI sells the Sun Style Booth in the United States to third-party distributors who,
`
`in turn, resell the Sun Style Booth to purchasers, including tanning salons and consumers who
`
`operate the product (collectively, “the Purchasers”). SSI actively aids and abets the resale and
`
`use of the Sun Style Booth.
`
`15.
`
`Upon further information and belief, SSI’s distributors have infringed the ‘288
`
`patent and the ‘461 patent by using, offering to sell, and selling the Sun Style Booth in the
`
`United States.
`
`16.
`
`Upon further information and belief, the Purchasers of the Sun Style Booth have
`
`infringed and are now infringing the ‘288 patent and the ‘461 patent by using this product in the
`
`United States.
`
`17.
`
`18.
`
`COUNT I
`
`(Direct Infringement of U.S. Patent No. 8,201,288)
`
`Sunless incorporates by reference herein the foregoing paragraphs.
`
`By making, using, offering to sell, and selling the Sun Style Booth in the United
`
`States, SSI has directly infringed and is infringing one or more claims of the ‘288 patent, in
`
`violation of 35 U.S.C. § 271(a).
`
`19.
`
`SSI’s actions as described above demonstrate a deliberate and conscious decision
`
`to infringe the ‘288 patent, or at the very least, a reckless disregard of Sunless’ patent rights.
`
`20.
`
`The direct
`
`infringement of the ‘288 patent by SSI was and is willful and
`
`deliberate, and will continue unless enjoined by this Court.
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`- 6 -
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`
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 7 of 11 PageID #: 255
`
`21.
`
`As a result of the direct infringement of the ‘288 patent by SSI, Sunless has
`
`suffered, and continues to suffer, damages in an amount to be established at trial. Furthermore,
`
`Sunless has suffered, and continues to suffer, irreparable harm for which there is no adequate
`
`remedy at law.
`
`22.
`
`23.
`
`COUNT II
`
`(Indirect Infringement of U.S. Patent No. 8,201,288)
`
`Sunless incorporates by reference herein the foregoing paragraphs.
`
`SSI has offered to sell and sold the Sun Style Booth in the United States to
`
`distributors. SSI has also actively aided and abetted distributors and the Purchasers to offer for
`
`sale, sell and/or use the Sun Style Booth. SSI intended to cause these acts and knew or should
`
`have known would directly infringe one or more claims of the ‘288 patent.
`
`24.
`
`By actively and knowingly aiding and abetting distributors and the Purchasers to
`
`offer for sale, sell, and/or use the Sun Style Booth, SSI has indirectly infringed and is indirectly
`
`infringing one or more claims of the ‘288 patent, in violation of 35 U.S.C. § 271(b).
`
`25.
`
`SSI’s actions as described above demonstrate a deliberate and conscious decision
`
`to infringe the ‘288 patent, or at the very least, a reckless disregard of Sunless’s patent rights.
`
`26.
`
`The indirect infringement of the ‘288 patent by SSI was and is willful and
`
`deliberate, and will continue unless enjoined by this Court.
`
`27.
`
`As a result of the indirect infringement of the ‘288 patent by SSI, Sunless has
`
`suffered, and continues to suffer, damages in an amount to be established at trial. Furthermore,
`
`Sunless has suffered, and continues to suffer, irreparable harm for which there is no adequate
`
`remedy at law.
`
`- 7 -
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`
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 8 of 11 PageID #: 256
`
`COUNT III
`
`(Direct Infringement of U.S. Patent No. 8,545,461)
`
`Sunless incorporates by reference herein the foregoing paragraphs.
`
`By making, using, offering to sell, and selling the Sun Style Booth in the United
`
`28.
`
`29.
`
`States, SSI has directly infringed and is infringing one or more claims of the ‘461 patent, in
`
`violation of 35 U.S.C. § 271(a).
`
`30.
`
`SSI’s actions as described above demonstrate a deliberate and conscious decision
`
`to infringe the ‘461 patent, or at the very least, a reckless disregard of Sunless’s patent rights.
`
`31.
`
`The direct
`
`infringement of the ‘461 patent by SSI was and is willful and
`
`deliberate, and will continue unless enjoined by this Court.
`
`32.
`
`As a result of the direct infringement of the ‘461 patent by SSI, Sunless has
`
`suffered, and continues to suffer, damages in an amount to be established at trial. Furthermore,
`
`Sunless has suffered, and continues to suffer, irreparable harm for which there is no adequate
`
`remedy at law.
`
`33.
`
`34.
`
`COUNT IV
`
`(Indirect Infringement of U.S. Patent No. 8,545,461)
`
`Sunless incorporates by reference herein the foregoing paragraphs.
`
`SSI has offered to sell and sold the Sun Style Booth in the United States to
`
`distributors. SSI has also actively aided and abetted distributors and the Purchasers to offer for
`
`sale, sell and/or use the Sun Style Booth. SSI intended to cause these acts and knew or should
`
`have known would directly infringe one or more claims of the ‘461 patent.
`
`- 8 -
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 9 of 11 PageID #: 257
`
`35.
`
`By actively and knowingly aiding and abetting distributors and the Purchasers to
`
`offer for sale, sell, and/or use the Sun Style Booth, SSI has indirectly infringed and is indirectly
`
`infringing one or more claims of the ‘461 patent, in violation of 35 U.S.C. § 271(b).
`
`36.
`
`SSI’s actions as described above demonstrate a deliberate and conscious decision
`
`to infringe the ‘461 patent, or at the very least, a reckless disregard of Sunless’ patent rights.
`
`37.
`
`The indirect infringement of the ‘461 patent by SSI was and is willful and
`
`deliberate, and will continue unless enjoined by this Court.
`
`38.
`
`As a result of the indirect infringement of the ‘461 patent by SSI, Sunless has
`
`suffered, and continues to suffer, damages in an amount to be established at trial. Furthermore,
`
`Sunless has suffered, and continues to suffer, irreparable harm for which there is no adequate
`
`remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Sunless prays that the Court:
`
`A.
`
`Preliminarily and permanently enjoin SSI, and its officers, employees, servants,
`
`and agents, and all persons in active concert with any of them, against any further acts of direct
`
`infringement or indirect infringement under 35 U.S.C. § 283, including without limitation
`
`making, using, offering to sell, and/or selling the Sun Style Booth.
`
`B.
`
`Order SSI to pay, in accordance with 35 U.S.C. § 284, damages adequate to
`
`compensate for the patent infringement, but in no event less than a reasonable royalty for the
`
`use made of the invention, together with interest and taxable costs.
`
`C.
`
`Find the infringement by SSI to be willful, and order it to pay three (3) times the
`
`amount of damages found or assessed, under 35 U.S.C. § 284.
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`- 9 -
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`
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 10 of 11 PageID #: 258
`
`D.
`
`Find this to be an exceptional case under 35 U.S.C. § 285, and order SSI to pay
`
`Plaintiff’s attorneys’ fees, expenses and costs in this action.
`
`E.
`
`Grant Sunless such other and further relief as the Court may deem proper and just
`
`under the circumstances.
`
`Dated: January 30, 2014
`
`Respectfully submitted,
`
`/s/ Steven M. Auvil
`
`Steven M. Auvil (PHV)
`steven.auvil@squiresanders.com
`Bryan J. Jaketic (PHV)
`bryan.jaketic@squiresanders.com
`F. Maximilian Czernin (PHV)
`maximilian.czernin@squiresanders.com
`SQUIRE SANDERS (US) LLP
`4900 Key Tower, 127 Public Square
`Cleveland, Ohio 44114
`Telephone: (216) 479-8023
`Facsimile: (216) 479-8780
`
`Attorneys for Plaintiff Sunless, Inc.
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`- 10 -
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`
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`Case 1:12-cv-00179-TBR Document 39 Filed 01/30/14 Page 11 of 11 PageID #: 259
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 30, 2014, all counsel of record who have consented to
`
`electronic service are being serviced with a copy of this document via the Court’s CM/ECF
`
`system pursuant to Local Rule 5.4. Any other counsel of record will be served by First Class
`
`U.S. mail on this same date.
`
`/s/ Steven M. Auvil
`Counsel for Defendant Sunless, Inc.
`
`- 11 -
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