Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA952850
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`Filing date:
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`02/07/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91245305
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Ward Kraft Inc.
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`AMY BROZENIC
`LATHROP GAGE LLP
`10851 MASTIN BLVD, BLDG 82 SUITE 1000
`OVERLAND PARK, KS 66210
`UNITED STATES
`abrozenic@lathropgage.com, jpoplin@lathropgage.com, tmccal-
`lon@lathropgage.com, esidler@lathropgage.com, tmueller@lathropgage.com,
`ipdocketing@lathropgage.com
`913-451-5103
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`Opposition/Response to Motion
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`Amy Brozenic
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`abrozenic@lathropgage.com, jpoplin@lathropgage.com, tmccal-
`lon@lathropgage.com, esidler@lathropgage.com, tmueller@lathropgage.com,
`ipdocketing@lathropgage.com
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`/Amy Brozenic/
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`02/07/2019
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`2019-02-07 WK Opp to M_Suspend.pdf(92664 bytes )
`Ex A_2018-10-09 Complaint.pdf(80084 bytes )
`Ex B_2018-12-13 Grtng M_Stay.pdf(203845 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91245305
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`In Re: Application Serial No. 87/495,276
`For the Mark: Two-dimensional configuration of a wristband as part of a configuration of a
`business form
`Filed: June 19, 2017
`Published in the Official Gazette: November 13, 2018
`________________________________________________
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`Ward Kraft Inc.,
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`Opposer,
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`v.
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`ZIH Corp.,
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`Applicant.
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`OPPOSER’S OPPOSITION TO MOTION TO SUSPEND PROCEEDINGS
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`ZIH’s Motion to Suspend fails to inform the Board of key facts and legal principles that
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`undermine its request for a suspension of this proceeding in favor of the Illinois Litigation.
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`Under the circumstances, including the current posture of the Illinois Litigation, a suspension in
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`favor of that litigation is certain to waste resources and delay resolution of the issues at hand.
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`ZIH’s Motion should therefore be denied.
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`As an initial matter, ZIH’s Motion fails to mention that suspension under 37 C.F.R. §
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`2.117(a) is never required, even if there is a co-pending civil action or Board proceeding
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`involving the same parties and overlapping issues. “Suspension of a Board proceeding pending
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`the final determination of another proceeding is solely within the discretion of the Board.” 6
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`McCarthy on Trademarks and Unfair Competition § 32:47 (5th ed. 2018) (emphasis added); see
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`also TBMP 510.02. In exercising this discretion, the Board should take into account any
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`“unusual circumstances” counseling against suspension. TBMP 510.02.
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`1
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`Such “unusual circumstances” are present here. ZIH’s Motion to Suspend makes only
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`passing reference to a crucial fact—that the Illinois Litigation is itself stayed in favor of a lawsuit
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`filed by Ward Kraft in the U.S. District Court for the Eastern District of Missouri, Case No.
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`4:18-cv-1725 (the “Missouri Litigation”). (Motion to Suspend at 2 n.2.) In light of the stay of
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`the Illinois Litigation, a suspension of this proceeding in favor of the Illinois Litigation is certain
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`to substantially prolong the parties’ dispute, rather than lead to its economical disposition.
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`In the Missouri Litigation, Ward Kraft seeks injunctive relief and damages based on the
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`filing of the Illinois Litigation by ZIH and its affiliates (collectively, the “Zebra Entities”) in
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`violation of a covenant not to sue, as well as a declaration concerning the applicability of the
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`covenant. (Exhibit A, Complaint.) Ward Kraft brought these claims in the Eastern District of
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`Missouri in accordance with a forum selection clause in the covenant. (Id. ¶ 27.)
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`In granting Ward Kraft’s motion to stay the Illinois Litigation in favor of the Missouri
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`Litigation, the U.S. District Court for the Northern District of Illinois recognized that the
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`Missouri Litigation involves a “threshold issue that . . . must be resolve[d] before addressing the
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`merits of Zebra’s claims”—i.e., “whether Zebra may proceed on its claims [in the Illinois
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`Litigation] in light of the covenant not to sue.” (Exhibit B, Opinion and Order, at 6.)
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`ZIH’s Motion to Suspend this proceeding in favor of the now-stayed Illinois Litigation is
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`a transparent dilatory tactic, for the only way back to Illinois is through Missouri. If the
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`Missouri Litigation is resolved in Ward Kraft’s favor, then the Illinois Litigation will
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`subsequently terminate based on the “threshold issue” of the covenant not to sue and will never
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`address the functionality and non-distinctiveness of ZIH’s claimed trade dress, leaving the
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`parties to simply return to the Board after a year or more of pointless delay. If the Missouri
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`Litigation is resolved in the Zebra Entities’ favor, then the issues of the functionality and non-
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`2
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`distinctiveness of ZIH’s claimed trade dress may be adjudicated in the Illinois Litigation, but
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`only after significantly more delay as the Illinois Litigation runs its course.
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`Thus, far from “conserve both the Board’s and the parties’ resources” (Motion to
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`Suspend at 3), a suspension of this proceeding in favor of the Illinois Litigation is certain to
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`result in years of delay, and may never result in any district court adjudication concerning the
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`issues at hand in this proceeding. Denying ZIH’s requested suspension, on the other hand, would
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`allow expeditious adjudication of these issues here, with possible preclusive effect in the Illinois
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`Litigation when and if such issues become relevant there. Unsurprisingly, Ward Kraft has not
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`located a single Board decision granting a suspension under similar circumstances.
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`ZIH’s suggestion that parallel proceedings will result in “divergent and inconsistent
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`holdings” is misplaced, for it ignores recent Supreme Court precedent holding that “a court
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`should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are
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`met.” B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299 (2015). Notably, this
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`precedent undermines ZIH’s reliance on New Orleans Louisiana Saints LLC & NFL Properties
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`LLC v. Who Dat?, Inc., 99 U.S.P.Q.2d 1550, 2011 WL 3381380 (T.T.A.B. 2011), as the Board’s
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`analysis there relied in substantial part on a premise rejected by the Supreme Court in B & B
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`Hardware—that “a determination by the Board as to a defendant’s right to obtain or retain a
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`registration would not be binding or res judicata in respect to the proceeding pending before [a]
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`court.” 2011 WL 3381380, at *2.
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`The Board decisions cited by ZIH are also factually distinguishable because each
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`involved directly overlapping affirmative claims of priority and likelihood of confusion. In this
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`circumstance, the streamlining benefits of a suspension were clear, as the issues of priority and
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`likelihood of confusion would necessarily have to be resolved by both the Board and the district
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`3
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`court in the absence of a suspension. See New Orleans Louisiana Saints, 2011 WL 3381380, at
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`*3 (opposition alleging priority and likelihood of confusion, deceptiveness, and false suggestion
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`of connection suspended in favor of applicant’s lawsuit asserting competing claim of trademark
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`infringement); The Other Tel. Co. v. Connecticut Nat’l Tel. Co., Inc., 181 U.S.P.Q. (BNA) 125,
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`1974 WL 19878, at *2 (T.T.A.B. Feb. 11, 1974) (opposition alleging priority and likelihood of
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`confusion suspended in favor of opposer’s lawsuit asserting parallel claim of trademark
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`infringement).
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`Here, by contrast, the basis for ZIH’s Motion is not a competing affirmative claim in the
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`Illinois
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`Litigation,
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`but Ward
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`Kraft’s
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`Eleventh
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`Affirmative
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`Defense.
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`“An affirmative defense assumes the allegations in the complaint to be true but, nevertheless,
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`constitutes a defense to the allegations in the complaint. An affirmative defense does not negate
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`the elements of the cause of action; it is an explanation that bars the claim.” Amanda
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`Blackhorse, Marcus Briggs, Phillip Gover, Jillian Pappan, & Courtney Tsotigh v. Pro Football,
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`Inc., 98 U.S.P.Q.2d 1633, 2011 WL 1886402, at *5 (T.T.A.B. 2011). As such, Ward Kraft’s
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`Eleventh Affirmative Defense may never be adjudicated.
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`Moreover, even if Ward Kraft’s Eleventh Affirmative Defense is eventually adjudicated,
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`the parties would then have to return to the Board (after years of delay) for resolution of Ward
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`Kraft’s fraud claim in this proceeding and its effect on ZIH’s right to registration of its alleged
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`trade dress—matters that are not at issue in the Illinois Litigation and that the Board is uniquely
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`positioned to address. See, e.g., Buzz Seating, Inc. v. Encore Seating, Inc., No. 1:16-CV-1131,
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`2017 WL 2619340, at *8 (S.D. Ohio June 16, 2017) (noting that courts have no jurisdiction over
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`registration issues concerning unregistered trademarks).
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`4
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`In sum, a suspension of this proceeding in favor of the now-stayed Illinois Litigation will
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`be inefficient and wasteful, as it will only prolong the parties’ dispute. The Board therefore
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`should exercise its sound discretion by denying ZIH’s Motion to Suspend.
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`Dated: February 7, 2019
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`Respectfully submitted,
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`LATHROP GAGE LLP
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`/Amy Brozenic/
`Amy Brozenic
`10851 Mastin Boulevard
`Building 82, Suite 1000
`Overland Park, KS 66210-1669
`T: (913) 451-5103
`F: (913) 451-0875
`abrozenic@lathropgage.com
`ipdocketing@lathropgage.com
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`Attorneys for Opposer
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing document was filed online
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`with the Trademark Trial and Appeal Board using the ESTTA on February 7, 2019.
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`/Amy Brozenic/
`Attorney for Petitioner
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`30711362v.5
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`5
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`EXHIBIT A
`EXHIBIT A
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 1 of 13 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MISSOURI
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`Plaintiff,
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`v.
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`WARD-KRAFT, INC.,
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`ZEBRA TECHNOLOGIES CORPORATION,
`ZEBRA TECHNOLOGIES
`INTERNATIONAL, LLC, LASER BAND
`LLC, and ZIH CORP.,
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`Case No. 4:18-cv-1725
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`JURY TRIAL DEMANDED
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`Defendants.
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`COMPLAINT
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`Plaintiff Ward-Kraft Inc. (“Ward Kraft”), by and through its undersigned counsel, hereby
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`sets forth its Complaint against Defendants Zebra Technologies Corporation (“ZTC”), Zebra
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`Technologies International, LLC (“ZTI”), Laser Band LLC (“Laser Band”), and ZIH Corp.
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`(“ZIH”) (collectively, “Defendants” or “Zebra”), as follows:
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`THE PARTIES
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`1.
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`Plaintiff Ward-Kraft, Inc. is a corporation organized and existing under the laws
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`of the state of Kansas with its principal place of business at 2401 Cooper Street, Fort Scott,
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`Kansas 66701.
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`2.
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`Upon information and belief, Defendant Zebra Technologies Corporation
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`(“ZTC”) is a corporation organized under the laws of Delaware with its principal place of
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`business at 3 Overlook Point, Lincolnshire, Illinois 60069.
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`1
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 2 of 13 PageID #: 2
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`3.
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`Upon information and belief, Defendant Zebra Technologies International, LLC
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`(“ZTI”) is a limited liability company organized and existing under the laws of the State of
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`Illinois with its principal place of business at 3 Overlook Point, Lincolnshire, Illinois 60069.
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`4.
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`Upon information and belief, Defendant Laser Band LLC (“Laser Band”) is a
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`limited liability company organized under the laws of the State of Missouri with its principal
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`place of business at 120 South Central, Suite 450, St. Louis, Missouri 63105.
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`5.
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`Upon information and belief, Defendant ZIH Corp. (“ZIH”) is a corporation
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`organized and existing under the laws of the State of Delaware with its principal place of
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`business at 3 Overlook Point, Lincolnshire, Illinois 60069.
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`JURISDICTION AND VENUE
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`6.
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`Ward Kraft’s declaratory judgment claim arises under the Declaratory Judgment
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`Act, 28 U.S.C. §§ 2201 and 2202. This Court has subject matter jurisdiction over that claim and
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`Ward Kraft’s state law breach of contract claim based upon diversity pursuant to 28 U.S.C. §
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`1332, because Ward Kraft is a citizen of a different State than all of the Defendants and the
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`matter in controversy exceeds the sum or value of $75,000.
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`7.
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`Defendants are subject to personal jurisdiction in this District and subject to the
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`Court’s specific and general jurisdiction, pursuant to due process, on the grounds that they either
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`reside in this District and the State of Missouri, regularly conduct or solicit business, engage in
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`other persistent courses of conduct, and/or derive substantial revenue from the sale of goods and
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`services to persons or entities in this District, and because a substantial part of the events or
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`omissions giving rise to Ward Kraft’s claims occurred in this District.
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`8.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391 because Defendants
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`either reside in this District and the State of Missouri, are subject to personal jurisdiction in this
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`2
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 3 of 13 PageID #: 3
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`District, and/or previously agreed via contract that any action to enforce any provision of the
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`License Agreement that is the subject of this Complaint “shall be brought exclusively” in this
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`District.
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`BACKGROUND FACTS
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`9.
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`Since 1972, Ward Kraft has been a nationally known leader in the printing
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`industry, specializing in the design and production of labels, commercial printing, mailers, and
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`business forms. Ward Kraft’s expertise includes creating continuous, unit set, cut sheet labels
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`and form/label combinations for use in a variety of different industries.
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`10.
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`In the late 1990’s, Jim Riley approached Ward Kraft about assisting with the
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`design and development of self-laminating patient identification wristband forms for use in
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`hospitals and throughout the medical industry. Jim Riley was then an officer of Riley, Barnard
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`& O’Connell Business Products Inc. (“RBO”), and the owner of Laser Band, LLC.
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`11. Ward Kraft agreed and expended substantial time and resources, and provided
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`valuable expertise, in order to develop these wristband forms, which the parties referred to as the
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`“LB1” products. RBO agreed that, in return for Ward Kraft’s significant contributions, Ward
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`Kraft would have the exclusive right to manufacture the LB1 products. And Ward Kraft
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`ultimately did, in fact, design and manufacture these products for RBO.
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`12.
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`In March 1999, The Standard Register Company, another market participant,
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`threatened RBO with litigation in relation to the LB1 products. RBO then brought suit against
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`Standard Register, seeking a declaration of non-infringement, invalidity, and unenforceability of
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`a patent owned by Standard Register relating to certain wristband forms and labels. Standard
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`Register then filed counterclaims against RBO and Ward Kraft alleging patent infringement,
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`which RBO and Ward Kraft denied.
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`3
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 4 of 13 PageID #: 4
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`13.
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`In August 2000, RBO, Standard Register, and Ward Kraft came to an agreement
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`to end all litigation and, in conjunction with additional interested non-parties Jim Riley, Laser
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`Band, and the Avery Dennison Corporation, entered into certain other agreements to govern the
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`rights of the various entities moving forward.
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`14.
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`As a result, in addition to a Settlement Agreement between RBO, Standard
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`Register, and Ward Kraft, Laser Band and Ward Kraft entered into a separate License Agreement
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`effective August 11, 2000, whereby Ward Kraft agreed to make and sell certain licensed
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`wristband forms in exchange for the payment of royalties to Laser Band. A copy of the License
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`Agreement (the “Agreement”) is attached hereto as Exhibit A.
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`15.
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`Under Paragraph 1 of the Agreement, and as reflected in various other portions of
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`therein, Laser Band granted to Ward Kraft a royalty-bearing, non-exclusive license/sub-license
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`under four patents owned by Laser Band (referred to as the “Riley Patents” in the Agreement)
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`and one patent owned by Standard Register and licensed to Laser Band (referred to as the
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`“Standard Patent” in the Agreement). The license granted Ward Kraft the right, under the
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`aforementioned patents, to make, use, offer to sell, sell, and import certain types of forms
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`identified by Laser Band as PLS-102 and PLS-102W, as well as “other forms having both labels
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`and a Wristband, the wristband being formed from a portion of the face ply and a portion of the
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`liner ply, with the liner ply having a pair of integrally formed tabs for fastening the wristband
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`and with a substantial portion of the face ply in the completed wristband being laminated on both
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`sides by the portion of the liner ply.” These forms are defined and referred to throughout the
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`Agreement as “Combo Forms.”
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`16.
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`Paragraph 1 of the Agreement further states that “Combo Forms covered by any
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`of the Riley Patents or the Standard Patent shall be considered as ‘Licensed Products’.”
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`4
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 5 of 13 PageID #: 5
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`17.
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`In addition to the royalty-bearing patent license granted by Laser Band to Ward
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`Kraft, the Agreement includes a mutual covenant by the parties not to sue each other in
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`connection with Combo Forms. Specifically, in Paragraph 12(h) of the Agreement, Laser Band
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`granted to Ward Kraft and Ward Kraft granted to Laser Band “a covenant not to sue under any
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`intellectual property or other right in connection with the making, using, offering for sale, sale
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`and importing of the Combo form.” (See Ex. A, p. 4 (emphasis added).) This mutual covenant
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`not to sue is not limited to the Riley Patents or Standard Patent—or even patent rights
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`generally—and is on its face broader in scope than the license granted by Laser Band to Ward
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`Kraft under Paragraph 1 of the Agreement (regarding “Licensed Products”).
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`18. Ward Kraft complied with all of its duties and obligations under the Agreement.
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`At no point has there been any evidence or accusation by Laser Band or any successor company
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`that Ward Kraft breached or failed to fulfill its duties or obligations under the Agreement. In
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`fact, Ward Kraft manufactured the License Products and paid Laser Band millions of dollars in
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`royalties based upon its sale of Licensed Products throughout the life of the Agreement.
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`19.
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`Paragraph 12(f) of the Agreement states that Paragraphs 4 and 9-12 will survive
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`the expiration or earlier termination of the Agreement.
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`20. Moreover, under Paragraph 12(c), the Agreement inures to the benefit of the
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`parties (Laser Band and Ward Kraft), as well as their “successors and assigns,” including a
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`successor who acquires substantially all of the business of a party.
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`21.
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`In 2012, upon
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`information and belief, Defendants Zebra Technologies
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`Corporation, Zebra Technologies International, LLC, and/or ZIH Corp acquired all or
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`substantially all of Defendant Laser Band and its business. Upon information and belief, all of
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`these entities are now affiliated.
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`5
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 6 of 13 PageID #: 6
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`22.
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`On July 9, 2018, Defendant Laser Band along with its corporate successors
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`Defendants Zebra Technologies Corporation, Zebra Technologies International, LLC, and/or
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`ZIH Corp (collectively, “Zebra”) filed a lawsuit in the District Court for the Northern District of
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`Illinois (Case No. 1:18-cv-04711-SLE) (the “NDIL Lawsuit”) against Ward Kraft and one of its
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`primary distributors, Typenex Medical, LLC. A copy of the Defendants’ Complaint is attached
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`hereto as Exhibit B.
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`23.
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`The NDIL Lawsuit alleges that Ward Kraft is manufacturing, using, and/or selling
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`a number of various forms that infringe Laser Band’s and/or Zebra’s intellectual property rights.
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`Specifically, Laser Band and Zebra allege that “Ward Kraft manufactures and sells business
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`forms that incorporate self-laminating, laser-printable patient identification wristbands, which
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`Typenex markets and sells under the following marks: Helix AC Laser (Adult), Helix AC Laser
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`L2 (Adult), Helix AC Laser L2 (Pediatric/Infant), Helix AC Laser L3 (Adult), FamBand Helix
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`Laser AC, and FamBand Laser,” which the Complaint in the NDIL Lawsuit refers to as
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`“Typenex Products.” Laser Band and Zebra also allege that “Ward Kraft markets and sells
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`business forms that incorporate self-laminating, laser-printable patient identification wristbands
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`under the PolyBand mark.” (See Ex. B, ¶ 61.) All of these accused products are the successor
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`wristband forms to the original LB1 products mentioned above.
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`24. More specifically, the NDIL Lawsuit alleges that the Helix AC Laser L2 and/or
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`Helix AC Laser L3 products infringe one or more of Laser Band’s U.S. Patent No. 7,779,569,
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`U.S. Patent No.8,011,125, U.S. Patent No. 7,017,293, U.S. Patent No. 7,017,294, U.S. Patent No.
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`7,222,448, U.S. Patent No. 7,325,347, U.S. Patent No. 7,461,473, and U.S. Patent No. 7,779,570.
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`(See Ex. B, Counts I - VIII.) The NDIL Lawsuit alleges that the Helix AC Laser (Adult), Helix
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`AC Laser L2 (Adult), Helix AC Laser L2 (Pediatric/Infant), Helix AC Laser L3 (Adult),
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`6
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 7 of 13 PageID #: 7
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`FamBand Helix Laser AC, FamBand Laser, and PolyBand 3 products infringe one or more of
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`Laser Band’s and/or Zebra’s trademark or trade dress rights under 15 U.S.C. § 1125(a). (See Ex.
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`B, Counts IX – XI.) And the NDIL Lawsuit alleges that Ward Kraft uses Laser Band’s and/or
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`Zebra’s LASER BAND trademark in a misleading fashion such that Ward Kraft violates 15
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`U.S.C. § 1125(a). (See Ex. B, Count XII.)
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`25.
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`All of the products named in the NDIL Lawsuit fall within the definition of a
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`Combo Form as defined in Paragraph 1 of the Agreement between Laser Band and Ward Kraft.
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`Moreover, all twelve Counts asserted by Laser Band and Zebra in the NDIL Lawsuit are based
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`upon an intellectual property (or other) right. Thus, all of the Counts asserted by Laser Band and
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`Zebra in the NDIL Lawsuit fall within the covenant not to sue that Laser Band granted to Ward
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`Kraft in the Agreement.
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`26.
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`By filing the NDIL Lawsuit against Ward Kraft and alleging violations of
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`intellectual property (or other) rights through the sale of wristband form products that qualify as
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`Combo Forms under the Agreement, Defendants breached the covenant not to sue in Paragraph
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`12(h) of the Agreement.
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`27.
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`Under Paragraph 12(a) of the Agreement, Laser Band and Ward Kraft agreed to
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`litigate any action to enforce the Agreement exclusively before the federal courts in the Eastern
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`District of Missouri. Indeed, this paragraph states that the Agreement shall be construed,
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`interpreted, and applied pursuant to the laws of the State of Missouri, and contains the following
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`provision:
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`[A]ny action by any party to enforce any provision of this Agreement shall be
`brought exclusively in the United States District Court for the Eastern District of
`Missouri, Eastern Division.
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`7
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 8 of 13 PageID #: 8
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`28.
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`In the NDIL Lawsuit, Ward Kraft has pleaded the covenant not to sue as an
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`affirmative defense to Laser Band’s and Zebra’s claims, but has not asserted any affirmative
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`cause of action for breach or to enforce the Agreement.
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`COUNT I
`BREACH OF CONTRACT
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`29. Ward Kraft incorporates by reference all previous allegations as though set forth
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`fully herein.
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`30.
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`The License Agreement described herein was duly executed by Laser Band and
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`Ward Kraft, and constitutes a valid, binding, and enforceable contract.
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`31.
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`The License Agreement created contractual obligations between Laser Band and
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`Ward Kraft, including, but not limited to, Laser Band’s covenant not to sue Ward Kraft under
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`any intellectual property or other right in connection with the making, using, offering for sale,
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`sale and importation of products that qualify as Combo Forms as defined in the Agreement.
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`32. Ward Kraft performed all of its material obligations required under the
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`Agreement, including payment of all royalty amounts to Laser Band for the sale of Licensed
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`Products throughout the life of the Agreement, and satisfaction of all other promises and
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`obligations listed in the Agreement.
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`33.
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`Per the terms of the Agreement, Laser Band’s promise not to sue Ward Kraft is
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`valid and subsisting and survives either expiration or termination of the Agreement.
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`34.
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`The Agreement makes clear that it inures to the benefit of the parties and their
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`“successors and assigns,” including a successor who acquires substantially all of the business of
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`a party.
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`8
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 9 of 13 PageID #: 9
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`35.
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`Upon
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`information and belief,
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`in 2012, Defendants Zebra Technologies
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`Corporation, Zebra Technologies International, LLC, and/or ZIH Corp acquired all or
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`substantially all of Defendant Laser Band and its business.
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`36.
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`On July 9, 2018, Defendants, including Laser Band, filed the NDIL Lawsuit—a
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`lawsuit in the Northern District of Illinois (Case No. 1:18-cv-04711-SLE—against Ward Kraft
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`and one of its primary distributors, Typenex Medical, LLC.
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`37.
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`This NDIL Lawsuit alleges that Ward Kraft and Typenex are manufacturing,
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`using, and selling products that infringe Defendants’ intellectual property rights, including patent
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`and trademark rights.
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`38.
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`The products identified in the NDIL Lawsuit qualify as Combo Forms as they are
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`defined in Paragraph 1 the Agreement between Laser Band and Ward Kraft. All of Defendants’
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`claims in the NDIL Lawsuit are further based upon intellectual property or other rights as set out
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`in Paragraph 12(h) of the Agreement.
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`39.
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`Defendants’ bringing and assertion of the NDIL Lawsuit against Ward Kraft and
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`Typenex constitutes a material breach of the Agreement, specifically Laser Band’s covenant not
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`to sue Ward Kraft.
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`40.
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`By filing the NDIL Lawsuit, Defendants have also breached their implied duty of
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`good faith and fair dealing with respect to the Agreement.
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`41.
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`As a direct and proximate result of Defendants’ breach of the Agreement, Ward
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`Kraft has suffered damages and will continue to suffer damages, in an amount to be determined
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`at trial but not less than $75,000, and Ward Kraft is threatened with further irreparable harm that
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`cannot be compensated through an award of monetary relief. By way of example, not only has
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`Ward Kraft incurred unnecessary attorneys’ fees as a result of Defendants’ breach, but
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`9
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 10 of 13 PageID #: 10
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`Defendants’ breach has a direct and chilling effect in the market in regards to Ward Kraft’s
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`goods.
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`42.
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`As a result of the foregoing, Ward Kraft also requests a judgment for damages
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`and preliminary and permanent injunctive relief in its favor and against Defendants for breach of
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`the Agreement.
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`COUNT II
`DECLARATORY JUDGMENT
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`43. Ward Kraft incorporates by reference all previous allegations as though set forth
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`fully herein.
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`44.
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`An actual case or controversy and legal conflict exists between the parties as to
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`whether wristband forms identified by Defendants (in the NDIL Lawsuit) as the Helix AC Laser
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`L3 (Product Code CPO120W), Helix AC Laser L2 (Product Code CPO121W), Helix AC Laser
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`(Adult), Helix AC Laser L2 (Adult), Helix AC Laser L2 (Pediatric/Infant), Helix AC Laser L3
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`(Adult), FamBand Helix Laser AC, FamBand Laser, and PolyBand/PolyBand 3 products qualify
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`as “Combo Forms” pursuant to Paragraph 1 of the Agreement between Laser Band and Ward
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`Kraft and further fall within the covenant not to sue granted by Laser Band to Ward Kraft in
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`Paragraph 12 of the Agreement.
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`45.
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` Defendants have filed a lawsuit in the Northern District of Illinois (Case No.
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`1:18-cv-04711-SLE) against Ward Kraft and one of its distributors, Typenex Medical, LLC,
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`alleging that the above-mentioned wristband form products, inter alia: infringe U.S. Patent No.
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`7,779,569, U.S. Patent No.8,011,125, U.S. Patent No. 7,017,293, U.S. Patent No. 7,017,294,
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`U.S. Patent No. 7,222,448, U.S. Patent No. 7,325,347, U.S. Patent No. 7,461,473, U.S. Patent
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`No. 7,779,570; infringe or otherwise misrepresent Laser Band’s rights in Trademark Registration
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`
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 11 of 13 PageID #: 11
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`Nos. 2,550,744, 3,107,795, and 2,849,741; and infringe Defendants’ common law trademark
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`rights and trade dress rights in certain wristband forms, designations, and in the color blue.
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`46. Ward Kraft requests a declaration from this Court that (1) the products identified
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`by Defendants in the NDIL Lawsuit—including specifically wristband forms Helix AC Laser L3
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`(Product Code CPO120W), Helix AC Laser L2 (Product Code CPO121W), Helix AC Laser
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`(Adult), Helix AC Laser L2 (Adult), Helix AC Laser L2 (Pediatric/Infant), Helix AC Laser L3
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`(Adult), FamBand Helix Laser AC, FamBand Laser, and PolyBand/PolyBand 3—qualify as
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`“Combo Forms” pursuant to Paragraph 1 the Agreement; and (2) the covenant not to sue in
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`Paragraph 12(h) of the Agreement therefore applies to bar any intellectual property-based legal
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`claims or other claims that have been or could be asserted by Defendants in connection with the
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`making, using, offering for sale, sale and importing of such products, including specifically all
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`claims asserted by Defendants in the NDIL Lawsuit.
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`PRAYER FOR RELIEF
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`WHEREFORE, Ward Kraft respectfully requests that judgment be entered in its favor
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`and against Defendants Zebra Technologies Corporation, Zebra Technologies International,
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`LLC, Laser Band LLC, and ZIH Corp. as follows:
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`A.
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`An award of all monetary damages to which Ward Kraft is entitled by law,
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`including punitive damages, for Defendants’ breach of the Agreement, including
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`Defendants’ breach of the implied covenant of good faith and fair dealing;
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`B.
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`A declaration from this Court that (1) the products identified by Defendants in the
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`NDIL Lawsuit as qualify as “Combo Forms” pursuant to Paragraph 1 the
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`Agreement; and (2) the covenant not to sue in Paragraph 12(h) of the Agreement
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`therefore applies to bar any intellectual property based legal claims or other
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`
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`11
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 12 of 13 PageID #: 12
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`claims that have been or could be asserted by Defendants in connection with the
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`making, using, offering for sale, sale and importing of such products.
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`C.
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`Entry of preliminary and permanent injunctive relief in favor of Ward Kraft
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`staying and/or dismissing the lawsuit filed by Defendants in the Northern District
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`of Illinois (Case No. 1:18-cv-04711-SLE) in its entirety until such time as a
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`judicial determination in this Court can be made as to whether the aforementioned
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`products qualify as Combo Forms as defined in the Agreement and the
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`applicability of the covenant not to sue as defined in the Agreement;
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`D.
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`An award of Ward Kraft’s costs and reasonable attorneys’ fees and disbursements
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`incurred in defending the lawsuit improperly filed by Defendants in the Northern
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`District of Illinois, and the reasonable attorneys’ fees and disbursements incurred
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`in bringing and prosecuting the above-captioned case;
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`E.
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`F.
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`An assessment of interest, both pre- and post-judgment, on the damages awarded;
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`Any such further and additional relief as this Court deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Ward Kraft requests a jury trial on all issues so triable.
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`
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`12
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`Case: 4:18-cv-01725 Doc. #: 1 Filed: 10/09/18 Page: 13 of 13 PageID #: 13
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`Dated: October 9, 2018
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`
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`Respectfully submitted,
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`/s/ Matthew A. Jacober
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`By:
`
`
`Matthew A. Jacober (MO #51585)
`LATHROP GAGE LLP
`7701 Forsyth Blvd.
`Suite 500
`Clayton, MO 63105
`Telephone: (314) 613-2845
`Email: mjacober@lathropgage.com
`
`Travis W. McCallon
`Luke M. Meriwether
`LATHROP GAGE LLP
`2345 Grand Blvd.
`Suite 2200
`Kansas City, MO 64108
`Telephone: (816) 292-2000
`tmccallon@lathropgage.com
`Email:
`
`
`lmeriwether@lathropgage.co