Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA192751
`ESTTA Tracking number:
`02/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048392
`Defendant
`RyMed Technologies, Inc.
`David P. Gordon
`Gordon & Jacobson, P.C.
`60 Long Ridge Road, Suite 407
`Stamford, CT 06902
`UNITED STATES
`davidg@gordonjacobson.com, karen@gordonjacobson.com
`Motion to Suspend for Civil Action
`David P. Gordon
`pto@gordonjacobson.com
`/David P. Gordon/
`02/14/2008
`Motion to Suspend TTAB Proceeding.pdf ( 5 pages )(108270 bytes )
`Gordon Decl. Exh. 1.pdf ( 28 pages )(1980861 bytes )
`Gordon Decl. Exh. 2.pdf ( 12 pages )(891470 bytes )
`Gordon Declaration.pdf ( 3 pages )(88985 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
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`Registration No.: 3,l68,566
`Mark: NEUTRAL
`
`Registered: November 7, 2006
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`ICU MEDICAL, INC.,
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`Petitioner,
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`V.
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`RYMED TECHNOLOGIES, INC.,
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`Registrant.
`
`
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`Cancellation No. 92048392
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`MOTION TO SUSPEND PROCEEDING
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`PENDING OUTCOME OF FEDERAL COURT LITIGATION
`
`I.
`
`INTRODUCTION
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`The central issue in this cancellation proceeding — whether or not the trademark
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`NEUTRAL is “generic” and/or “merely descriptive” of the identified goods (certain medical
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`equipment) — is currently the subject of pending federal court litigation. Therefore, pursuant to
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`37 C.F.R. § 2. l l7(a) and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §
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`510.02, Registrant Rymed Technologies, Inc. (“Rymed”) respectfully moves the Board to
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`suspend this proceeding by Petitioner ICU Medical, Inc. (“ICU”) pending the outcome of the
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`likely determinative federal court litigation.
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`II.
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`SUMMARY OF PROCEEDINGS
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`On July 27, 2007, ICU filed against Rymed a Complaint in the District of Delaware
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`alleging that Rymed’s products infringe four patents held by ICU (“the Delaware Action”).
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`DM_US:2 l 0l7460_l
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`

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`On October 10, 2007, Rymed filed against ICU a Complaint for Injunctive Relief and
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`Damages in the United States District Court, Central District of California, Case No. SA CV 07-
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`ll99 (DOC) (the “California Action”).1 In the complaint, Rymed asserts claims for declaratory
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`relief of invalidity and non-infringement of the patents asserted by ICU in the Delaware Action,
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`and infringement of Rymed’s United States Trademark Registration No. 3,168,566 (“the ’566
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`Registration”) for the mark NEUTRAL.
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`On November 6, 2007, ICU filed this proceeding against Rymed, seeking to cancel
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`Rymed’s ’566 Registration for the mark NEUTRAL. The ’566 Registration covers “medical
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`apparatus for use in performing intravenous procedures, namely, tubing connectors and valves
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`for use in the collection of and distribution of blood and intravenous fluids” in International
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`Class 10. ICU claims the NEUTRAL is “generic” and/or “merely descriptive” of the identified
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`goods and therefore should not have registered as a trademark. In paragraph 8 of its petition,
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`ICU alleged that it will be harmed “by the continuing costs associated with defending against
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`Registrant’s infringement allegations and its efforts to enforce this descriptive/generic mar .”
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`ICU has not yet filed its answer to Rymed’s trademark infringement complaint in the
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`California Action, instead seeking to dismiss or transfer the California Action to Delaware. ICU,
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`however, has made clear in its correspondence to Rymed’s counselz, and in pleadings filed in the
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`California action3, that it intends to argue, among other things, that the NEUTRAL mark is
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`unenforceable as generic and/or descriptive of Rymed’s products.4
`
`1 See Exhibit 1 attached to the Declaration of David P. Gordon (“Gordon Declaration”) filed herewith.
`2 ICU’s correspondence was designated confidential, and is therefore not attached to this public filing. Rymed is
`willing to submit the correspondence under seal on reply, should ICU chose to deny this fact.
`3 See p. 4, lines 20-22 of Exhibit 2 to Gordon Declaration (“Rymed improperly assumes that the highly descriptive
`term “neutral” is a protectable trademar ”).
`4 ICU also apparently intends to argue that Rymed’s claims in the California Action are “moot” because ICU is
`allegedly no longer Rymed’s mark “NEUTRAL” alone, but is now using it in combination with the word
`(1) its
`“DISPLACEMENT” — i.e. “NEUTRAL DISPLACEMENT.” ICU, however, is wrong for several reasons:
`past use of NEUTRAL alone can result in a finding of willful infringement and an award of damages, and (2) its
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`DM_US:2 l 0l7460_l
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`

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`There is currently pending in the California Action a motion by ICU to either dismiss
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`Rymed’s claims or transfer Rymed’s claims to Delaware (including the NEUTRAL trademark
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`infringement claims) so RyMed’s California claims can be litigated in Delaware with ICU’s
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`patent claims. On January 30, 2008, in a telephonic hearing in the California Action, ICU’s
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`counsel represented to the Court that it would stipulate that Rymed could re-file its NEUTRAL
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`trademark infringement claims as counterclaims in the Delaware Action, should the Court
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`dismiss the California Action or transfer it to Delaware. ICU’s motion was continued to March
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`3, 2008. There is also pending in the Delaware Action a motion for reconsideration of that
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`Court’s decision not to transfer that action to California so it can be consolidated with the
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`pending California action. Regardless of the outcome of these venue disputes, Rymed’s
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`NEUTRAL trademark infringement claims will proceed in federal court, and the validity and
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`enforceability of the NEUTRAL ‘566 Registration is currently at issue.
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`III.
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`DISCUSSION
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`37 C.F.R. §2.117(a) states:
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`Whenever it shall come to the attention of the Trademark Trial and Appeal
`Board that parties to a pending case are engaged in a civil action which
`may have a bearing on the case, proceedings before the Board may be
`suspended until termination of the civil action.
`
`See also General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933, 1936-37
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`(TTAB 1992); Marie Claire Album S.A. v. Kruger GmbH& Co. KG, 29 USPQ2d 1792, 1794
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`(TTAB 1993); TBMP § 510.02(a) (“Ordinarily, the Board will suspend proceedings in the case
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`before it if the final determination of the other proceeding will have a bearing on the issues
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`before the Board.”) The rationale for this rule is that, “[t]o the extent that a civil action in
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`alleged current use of NEUTRAL DISPLACEMET could still be found to infringe Rymed’s NEUTRAL mark. See
`p. 4, line 22 — p.5, line 4 of Exhibit 2 to Gordon Declaration.
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`DM_US:2 1 0l7460_l
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`

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`Federal district court involves issues in common with those in a proceeding before the Board, the
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`decision of the Federal district court is often binding upon the Board .
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`.
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`. .” TBMP § 5 l0.02(a).
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`Rymed and ICU are clearly involved in district court litigation that will be dispositive of
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`this case. The trademark infringement claims asserted by Rymed against ICU in the California
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`Action involve the same trademark registration asserted in this proceeding. Futherrnore, ICU has
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`made clear in paragraph 8 of its Cancellation Petition, in correspondence to Rymed, and in one
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`of its venue-battle pleadings filed in the California Action, that ICU intends to challenge
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`Rymed’s NEUTRAL as generic and/or descriptive of Rymed’s goods. That is the same
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`argument made by ICU in this cancellation proceeding. Therefore, regardless of whether
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`Rymed’s trademark infringement claims proceed in California (as currently filed), or in
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`Delaware (as desired by ICU), the issue of the validity of Rymed’s NEUTRAL registration is
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`before the federal court. In the interest of efficiency and economy, and in light of the fact that a
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`district court decision is binding on the TTAB, this proceeding should be suspended pending the
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`outcome of the determinative federal court litigation.
`
`Respectfully submitted,
`
`Dated: February 14, 2008
`
`David Gordon
`
`GORDON & JACOBSON, P.C.
`60 Long Ridge Road
`Suite 407
`
`Stamford, CT 06902
`
`voice: (203) 323-1800
`fax: (203) 323-1803
`
`Attorneyfor Registrant
`Rymed Technologies, Inc.
`
`DM_US:2 l 0l7460_l
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing MOTION TO SUSPEND
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`PROCEEDINGS PENDING OUTCOME OF FEDERAL COURT LITIGATION was served on
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`February 14, 2008 by e-mail and first class mail, postage prepaid, on:
`
`Kimberly N. Van Voorhis
`Morrison & Foerster LLP
`
`755 Page Mill Road
`Palo Alto, California 94304-1018
`
`zéa///la»
`
`David P. Gordon
`
`DM_US:2 l 0l7460_l
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`

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`EXHIBIT 1
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`

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`HENRY C. BUNSOW (SBN 60707)
`bunsowh _hOwre .com
`K.T._C
`AN SBN 133967)
`chenankghowreysorn
`SCOTT _ ALES (SBN 179804)
`waless howre .cOm
`_
`HO
`Y LL
`525 Market Street _Su1te 3600
`San Franclsco, Ca11forn1a 94105
`Telephpne: 415) 848-4900
`Facs1mI1e: ( 15) 848-4999
`
`DONLIVORNESE(SBN125934)
`Iivomesed hOwTey.cOm
`IIOWREY LP
`550 South Ho eStreet
`LOSAnge1es, A90071
`Telephone: 213) 892-1800
`FacsImi1e:( 13) 892-2300
`Attorne s for Plaintiff
`RYME TECHNOLOGIES, INC.
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`3 A€E'9°G17_" 1 19 9
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`1. DECLARATORY JUDGMENTRE
`NON-INFRINGEMENT AND
`INVALIDITY OF PATENTS;
`% M 1}rC_T VTEOLATIONS;
`' INFRINGEMENT.
`'
`1
`4. FEDERAL UNEAIER
`COMPETITION;
`5. STATE TRADEMARK
`INFRINGEMENT-
`6.
`i'ID‘f;3TE UNFAIR COMPETITION;
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`7. RELATED CLAIMS
`
`DEMAND FOR JURY TRIAL
`
`COMPLAINT FOR DECLARATORY JUDGIVIENT, LANHAM ACT
`VIOLATIONS, TRADEMARK INFRINGEMENT, UNFAIR CONfl’I:T1TI N.
`AND RELATED CLAIMS
`
`Delaware corporatlon,
`,
`,8
`Plamtxff,
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`vs-
`A
`ICU MEDICAL, INC., aDe1awa;re
`corporation,
`
`Defendant
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`20
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`~ e——~-——~ ‘DM:US:20693563:5’
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`LP
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`Plaintiff RYMED TECHNOLOGIES, INC. (“RyMed”) alleges:
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`'
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`JURISDICTION‘
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`1.
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`This action arises under violations of federal patent law, the Lanham Act
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`(15 U.S.C. §§ 1051-1127 et seq.), California statutory trademark infringement. law (Cal.
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`Bus. & Prof. Code Section 14335), California statutory unfair competition law (Cal.
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`Bus. & Prof. Code Sections 17200 and 17500), and California common law doctrines of
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`passing off, unfair competition, intentional interference with contract, intentional
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`interference with prospective business and economic advantages. Accordingly, this
`Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 andj28 U.S.C. §§
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`1331, 1338, 1367, and 2201-2202. Jurisdiction over the patent claims and the Lanham
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`Act claims exists pursuant 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338, and 2201-
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`2202. This Court has jurisdiction over the California state law claims pursuant to 28
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`U.S.C. §§ 1338 and 1367.
`
`'
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`2.
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`Upon information and belief, this Court has personal jurisdiction over
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`Defendant ICU Medical, Inc. (“ICU”) because ICU’s principal place of business is in
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`this District. As such, ICU has transacted business in this District, contracted to supply
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`goods or services in this District, and has purposefully availed itself of the privileges
`and benefits ofthe laws of the State of California. This Court also has jurisdiction over
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`ICU because it has committed violations of federal patent law, the Lanham Act, and
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`California law during the course of its business in this District.
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`
`VENUE
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`3.
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`Venue is proper in this District pursuant to 28 U.S.C. §§ l391(b) and (c)
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`because ICU resides in this District, maintains its principal place of business in this
`District and may otherwise be found here, is subject to personal jurisdiction in this
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`District, and a substantial part of the events, omissions, and injuries giving arise to
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`RyMed’s claims occurred in this District.
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`DM US:2O693563I 5"’
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`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS; TRADEMARK BQFRINGENIENT, UNFAIR
`COMPETITION, AND RELATED CLAIMS
`
`

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`PARTIES
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`4.
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`Plaintiff RyMed is a corporation duly organized and existing under the
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`laws of Delaware, having a principal place of business at 137 Third Avenue North,
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`Franklin, Tennessee.
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`5.
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`Upon information and belief, Defendant ICU is a corporation duly
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`organized and existing under the laws of Delaware, having a principal place of business
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`at 951 Calle Arnanecer, San Clemente, California.
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`FACTUAL ALLEGATIONS
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`RyMed’s Business
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`6.
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`RyMed specializes in the design, development, and marketing of
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`innovative safety products in the field of intravenous catheter care management.
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`7.
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`RyMed is the owner of U.S. Trademark Registration No. 3,168,566, issued
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`on November 7, 2006, for the mark NEUTRAL® for use in association withneedleless
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`LV. connectors and injection ports for use in the aspiration and administration of blood
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`and intravenous fluids. RyMed has used its NEUTRAL® mark since at least December
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`1, 2005. This registration, duly and legallygissued by the United States Patent and
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`Trademark Office, is valid and subsisting. Registration Number 3,168,566 is attached
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`hereto as Exhibit A to this Complaint.
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`8.
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`Through its extensive use of the NEUTRAL® mark, RyMed also owns
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`common law trademark rights in its NEUTRAL® mark and in association with its
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`commercial products: the InVision-Plus® NEUTRAL® I.V. Connector System.
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`The InVision-Plus® NEUTRAL® I.V. Connector System
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`RyMed created the InVision—Plus® NEUTRAL® I.V. Connector System,
`9.
`which is designed to prevent blood reflux into a catheter when the IniVision-P1us®
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`NEUTRAL® is connected to and disconnected. liom a syringe and/or I.V. set. This
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`product reduces the possibility of intralurninal thrombotic catheter occlusions, as well as
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`reduces the possibility of intraluminal catheter—related bloodstream infections.
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`VIOLATIONS. TRADEMARK INFRINGEMENT, UNFAIR
`COMPETITION, AND RELATED CLAIMS
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`10.
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`The InVision—Plus® NEUTRAL®. I.V. Connector System is the first
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`injection port developed in the medical field that demonstrates a zero fluid displacement
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`feature, meaning no reflux of blood into the catheter lumen following connection to, or
`disconnection from, the injection port. The InVision—Plus® NEUTRAL® product has no
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`negative fluid displacement, meaning that immediately upon connection to- the
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`InVision-Plus® NEUTRAL® I.V. Connector, 0.000rnL (—0.000rnL/+0.002mL) of fluid
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`is displaced, and immediately upon disconnection from the lnVision-Plus® NEUTRAL®
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`I.V. Connector, 0.000InL (+/— 0.000mL) of fluid is displaced. The Fluid Displacement
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`Study protocol and test results were developed and reported by an independent testing
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`laboratory (Nelso_n Laboratories, Inc., Salt Lake City, UT). The data from the Nelson
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`Laboratories study demonstrated that the lnVision-Plus® NEUTRAL® I.V. Connector
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`System has no fluid movement refluxing into a tubing lumen equivalent to a 2 Fr
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`catheter with an average distance of 0.0011-1m.
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`1 1.
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`As a consequence of the extensive sales under, and‘ advertising, promotion,
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`and use of the NEUTRAL® mark, RyMed has developed significant recognition in its
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`NEUTRAL® mark. RyMed has acquired and enjoys a valuable reputation and
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`tremendous goodwill under the NEUTRAL® mark.
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`The InVision-Plus® NEUTRAL® with Modified Boat
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`12.
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`RyMed has also designed and created a new product, the InVision—Plus®
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`NEUTRAL® with Modified Boot. RyMed has taken concrete steps with the intent to
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`manufacture, sell, and offer to sell in the United States the InVision-Plus® NEUTRAL®
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`with Modified Boot. These steps include:
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`a. The completion of all engineering‘ design drawings for the new modified boot;
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`b. The completion of all engineering functional testing on the new modified
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`boon
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`c. The completion of all sterilization testing on the new modified boot;
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`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS. TRADEMARK IN"FRINGEMENT, UNFAIR
`COMLPETITION. AND RELATED CLAIMS
`
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`d. The development of a large cavitation production mold of the new modified
`boot design scheduled for completion in the late fourth quarter of 2007; and
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`e. The preparation of sales and marketing literature for the new modified boot
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`design;
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`RyMed expects to offer the InVision—Plus® NEUTRAL® with Modified Boot for sale in
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`the first quarter of 2008.
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`ICU’s Business
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`13. Upon information and belief, ICU develops and manufactures safety
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`products in the field of intravenous catheter care management.
`14. Upon information and belief, prior to RyMed’s adoption of the
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`NEUTRAL® mark, ICU marketed and sold its CLAVE® and MicroCLAVE® products,
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`which are both needleless I.V. connectors used in the aspiration and administration of
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`blood and intravenous fluids. Approximately eighteen months after RyMed started
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`using its NEUTRAL® mark, ICU renamed its original MicroCLAVE® I.V'. Connector to
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`MicroCLAVE® NEUTRAL I.V. Connector, and continues to market and sell the
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`MicroCLAVE® Connector product under .its new tradenarne. ICU’s MicroCLAVE®
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`Neutral Connector‘ product is ostensibly designed to minimize blood reflux into a
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`catheter when a syringe and/or I.V. set is connected to and disconnected from the
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`MicroCLAVE® Neutral Connector.
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`15 . Upon information and belief, ICU markets its MicroCLAVE® Neutral
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`Connector product as having zero fluid displacement or reflux. However, a Fluid
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`Displacement Study by Nelson Laboratories, Inc., Salt Lake City, UT, demonstrated
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`that ICU’s Mic‘roCLAVE® Neutral Connector product is not a zero fluid displacement
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`I.V. connector. The study reflected immediately upon disconnection from the
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`MicroCLAVE® Neutral Connector, a volume of 0.028mL of fluid is refluxed. The data
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`from the Nelson Laboratories study further reflects the MicroCLAVE® Neutral
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`Connector product refluxed into a tubing lumen equivalent to a 2 Fr catheter with an
`
`DM US:20693563 S
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`_4__
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`cowtmron Dsctxumronv. JUDGMENT,LANHAM ACT
`VIOLATIONS. TRADEMARK INFRINGEMENT, UNFAIR
`COMPETITION. AND RELATED CLAIMS
`
`LP
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`

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`average distance of 47.8l’mm. For the CLAVE® I.V. Connector, the Nelson Laboratory
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`Study reflected that a volume of 0.022-mL of fluid is refluxed immediately upon
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`disconnection. The data fiom the Nelson Laboratories study further reflects the
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`CLAVE® I.V. Connector product refluxed into a tubing lumen equivalent to a 2 Fr
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`catheter with an average distance of 37.1 lmm. As such, the MicroCLAVE® Neutral
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`Connector product refluxes more fluid than ICU’s CLAVE® I.V. Connector product.
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`16.
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`ICU fully incorporates RyMed’s NEUTRAL® mark in the name of its
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`MicroCLAVE® Neutral Connector product, a product which occupies the same field as
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`RyMed’s InVision-Plus® NEUTRAL® I.V. Connector System. As such, consumers are
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`likely to be confused that RyMed is the source or sponsor of ICU’s MicroCLAVEl®A
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`Neutral Connector product or that there is an association between .RyMed and ICU.
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`Upon information and belief, ICU markets its MicroCLAVE® Neutral Connector
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`product as having zero fluid displacement.
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`ICU’s False Statements
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`17.
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`ICU seeks to maintain its market share in the field of intravenous catheter
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`care management. In order to do so, upon information and belief, ICU has
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`disseminated, used, and sponsored materially false and misleading advertising,
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`promotional, “educational,” and other materials that discredit and disparage RyMed’s
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`products, misrepresent ICU’s products, and misrepresent the Food & Drug
`Administration’s (“FDA’s”) investigation ofRyMed and RyMed’s voluntary recall of
`specific lots of its InVision—Plus® NEUTRAL® LV. Connector System. Upon
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`information and belief, the false and misleading statements ICU has made, used,
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`sponsored, and promoted to RyMed’s customers and/or potential customers include:
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`a.
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`b.
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`that RyMed’s products are unsafe due to coring and particulate matter
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`flowing into the patient’s fluid pathway;
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`that with respect to the FDA’s investigation of RyMed, Ry'Med’s actions
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`are a serious offense, even though RyMed has completed the voluntary
`
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`CDMPLA.IN'l' FOR DECLARATORY IUDGMENT, LANHAM ACT
`VIOLATIONS, TRADEMARK INFRINGEMENT, UNFAIR
`COMPETITION, AND RELATED CLAIMS
`
`LP
`
`

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`recall of specific lots of its InVision—Plus® NEUTRAL® LV. Connector
`System and the FDA considers the recall completed and. terminated;
`
`that RyMed has been sued by ICU and RyMed has serious patent
`
`infiingement problems with ICU’s patents;
`
`that ICU’s MicroCLAVE® Neutral Connector product is a zero fluid
`displacement product;
`.
`that ICU’s MicroCLA-VE-® Neutral Connector product is a saline flush
`
`only product because of its zero fluid displacement feature";
`
`that RyMed’s InVision-P1us® NEUTRAL® I.V. Connector System product
`
`trials have gone very poorly, the product has coring of the septum, and the
`
`product has serious patent infiingement problems; and
`
`that RyMed’s InVision—Plus® NEUTRAL® LV. Connector System has
`
`potential coring problems.
`
`'
`
`18.
`
`Among numerous other reasons, these statements were and continue to be
`
`false and misleading because:
`
`a.
`
`b.
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`RyMed’s products are safe;
`
`The FDA confirmed that RyMed’s corrective actions regarding its
`
`InVision-Plus® NEUTRAL® I.V. Connector System were appropriate, no
`
`further action was required, and the FDA considers the recall completed
`
`and terminated;
`
`RyMed does not infringe ICU’s patents; ‘
`
`ICU’s MicroCLAVE® Neutral Connector product is not a zero fluid
`
`displacement product;
`
`ICU’s MicroCLAVE® Neutral Connector product has a label claim that
`
`states it is a saline flush only product based upon false internal
`
`documentation that it has a zero fluid displacement feature; and
`
`RyMed’s InVision—Plus® NEUTRAL® I.V. Connector System product
`
`DM US:20693563 5
`
`__6__
`
`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS, TRADEMARK INFRINGEMENT, UNI-‘AIR
`COMFETITION, AND RELATED CLAIMS
`
`

`
`trials have not gone poorly, nor does the product have coring of the septum
`
`or potential coring problems if used according to directions for use.
`
`19.
`
`ICU also distributed misleading product literature designed to suggest the
`
`document originated from RyMed. An example of such literature is attached hereto as
`
`Exhibit B.
`
`20.
`
`ICU intended to deceive and/or mislead RyMed’s customers and/or
`
`potential customers, and did deceive and/or mislead them.
`
`21. Upon information and belief, ICU was aware of a distribution agreement
`between RyMed and Co-Medical, Inc. (“CoeMedical”).
`
`22. Upon information and belief, ICU met with Co~Medical in early August
`
`2006 and pressured Co—Medical to either discontinue its relationship with RyMed or
`
`risk losing ICU’s business.
`
`23.
`
`Co—Medical contacted RyMed after the ICU meeting and terminated its
`
`distribution agreement with RyMed in violation of the terms of that agreement.
`
`The Patents-In-Suit
`
`24.
`
`‘ Upon information and belief, ICU is the owner of the entire right, title, and .
`
`interest in and to United States Patent No. 5,685,866 (“the ‘866 patent”) entitled
`
`“Medical Valve and Method of Use.” A true and correct copy of the ‘866 patent ‘is
`
`attached hereto as Exhibit C to this Complaint.
`
`25. Upon information and belief, ICU is the owner of the entire right, title, and
`
`interest in and to United States Patent No. 5,873,862 (“the ‘862 patent”) entitled
`
`“Medical Valve and Method of Use.” A true and correct copy of the ‘862 patent is
`
`attached hereto as Exhibit D to this Complaint.
`
`26. Upon information and belief, ICU is the owner of the entire right, title, and
`
`interest in and to United States Patent No. 5,928,204 (“the ‘204 patent”) entitled
`
`“Medical Valve and Method of Use.” A true and correct copy of the ‘204 patent is
`
`attached hereto as Exhibit E to this Complaint.
`
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`DM US 20693563 5
`
`_7_
`
`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS.
`INFRINGEMENT, UNFAIR
`COMPETITION, AND RELATED CLAIMS
`
`LP
`
`

`
`27.. Upon information and belief, ICU is the owner of the entire right, title, and
`
`interest in and to United States Patent No. 5,572,592 (“the ‘S92 patent”) entitled
`
`“Medical Valve and Method of Use.” A true and correct copy of the ‘592 patent is
`
`attached hereto as Exhibit F to this Complaint.
`
`V
`
`28. On July 27, 2007, ICU filed a Complaint for Patent Infringement against
`RyMed in the United States District Court for the District ofDelaware, C.A. No. 07-
`
`468-JJF, alleging that RyMed’s InVisio.n—Plus® NEUTRAL® I.V. Connector System
`
`infringes the ‘866 patent,‘ the ‘862 patent, the ‘204 patent, and the ‘592 patent. RyMed
`
`must answer, move, or otherwise respond to ICU’s Complaint on October 17, 2007. As
`such, an actual and justiciable controversy exists between RyMed and ICU as to the
`
`non—infringement of the InVision—P1us® NEUTRAL® I.V. Connector System of the ‘866
`
`patent, the ‘862 patent, the ‘204 patent, and the ‘592 patent, as well as the invalidity of
`
`those patents.
`
`29.
`
`As described above, RyMed has taken ongoing concrete steps with the
`
`intent to manufacture, offer to sell and sell in the. United States the I’nVision.~Plus®
`
`NEUTRAL® with Modified Boot. RyMed intends to begin offering the InVision-Plus®
`NEUTRAL® with Modified Boot for sale in the first quarter of 2008.
`
`30. Because of similarities in design, purpose, and markets between the
`
`InVision—Plus® NEUTRAL® with Modified Boot and the—.InVision-Plus® NEUTRAL“-5’
`
`I.V. Connector System and the infringement lawsuit ICU filed against RyMed in
`
`Delaware with respect to the InVision-Plus® NEUTRAL® I.V. Connector System, there
`
`is a substantial controversy between RyMed and ICU as to the non—infringement of the
`
`InVision-Plus® NEUTRAL® with Modified Boot of the ‘866 patent, the ‘862 patent, the
`
`‘204 patent, and the ‘592 patent. RyMed is in the position of either continuing to
`
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`
`26 ‘ICU’s Delaware com laint incorrectly identified United States Patent No. 5,685,866 as
`United States Patent
`0. 5,865,866. RyMed assumes that .ICU is asserting claims of
`U.S. Patent No. 5,685,866 against RyMed in the Delaware case.
`
`27
`
`28
`
`DM US:20693S63 5
`
`_8_
`
`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS, TRADEMARK 1NFRlNGI:‘JvIENT,-UNFAIR
`COMPETITION, AND RELATED CLAIMS
`
`

`
`pursue its plans with respect manufacturing, offering to sell, and selling the InVision~
`Plus® NEUTRAL® with Modified Boot in the United States under apprehension of suit
`
`by ICU, or abandoning its efforts.
`
`31.
`
`This is an actual and justiciable controversy of sufficient immediacy and
`
`reality to warrant the issuance of a declaratory judgment.
`
`_
`
`COUNT 1
`
`DECLARATORY JUDGMENT O®F NON—INF%INGEMENT OF THE ‘866
`PATENT BY THE INVISION—PLUS NEUTRAL I.V. CONNECTOR SYSTEM
`
`_
`
`32. RyMed:realleges and incorporates herein by reference the matters alleged
`
`in Paragraphs 1 through 31 of this Complaint.
`
`33. An actual and justiciable controversy exists between RyMed and ICU as to
`
`the nominfringement of the ‘866 patent by the InVision—Plus® NEUTRAL® I.V.
`
`Connector System.
`
`34. RyMed’s InVision-Plus® NEUTRAL® I-.V. Connector System has not
`
`infiinged and does not infringe any valid and enforceable claim of the ‘866 patent,
`
`either directly, indirectly, literally, or under the doctrine of equivalents.
`
`35. RyMed has no adequate remedy at law. The actions and assertions made
`
`by ICU regarding the infringement of the ’InVision-P1us® NEUTRAL® I.V.. Connector
`
`System of the ‘866 patent have caused and, if not enjoined, will continue to cause
`
`irreparable injury to RyMed.
`
`COUNT 2
`
`DECLARATORY JUDGMENT O®F NON-INF%INGEMENT OF THE ‘862
`PATENT BY THE INVISION—PLUS NEUTRAL ’I.V. CONNECTOR SYSTEM
`
`‘
`
`36. RyMed realleges and incorporates herein by reference the matters alleged
`
`in Paragraphs 1 through 35 of this Complaint.
`
`37. An actual and justiciable controversy exists between RyMed and ICU as to
`the non-infringement of the ‘862 patent by the InVision-Plus® NEUTRAL® LV.
`
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`__9__
`
`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS, TRADEMARK INFRINGEMENT, UNFAIR
`COMPETITXON, AND RELATED CLAIMS
`
`LP
`
`

`
`Connector System.
`
`38. RyMed’s InVision-P.lus® NEUTRAL® I.V. Connector System has not
`
`infringed and does not infringe any valid and enforceable claim of the ‘.862 patent,
`
`either directly, indirectly, literally, or under the doctrine of equivalents.
`
`39. RyMed has no adequate remedy at law. The actions and assertions made
`
`by ICU regarding the infringement of the InVision-Plus‘® NEUTRAL® I.V. Connector
`
`System of the ‘862 patent have caused and, if not enjoined, will continue to cause
`
`irreparable injury to RyMed.
`
`COUNT 3
`
`NON—lNF%INGEMENT OF THE ‘.204
`DECLARATORY JUDGMENT
`PATENT BY THE INVISION-PLUS NEUTRAL I.V. CONNECTOR SYSTEM
`
`40. RyMed realleges and incorporates herein by reference the matters alleged
`
`in Paragraphs 1 through 39 of this Complaint.
`
`41. An actual and justiciable controversy exists between RyMed and ICU as to
`
`the non—infiingement of the ‘204 patent by the InVision—Plus® NEUTRAL® I.V.
`
`Connector System.
`
`42. RyMed’s InVision-Plus® NEUTRAL® I.V. Connector System has not
`infringed and does not infringe any valid and enforceable claim ofthe ‘204 patent,
`
`either directly, indirectly, literally, or under the doctrine of equivalents.
`
`43. RyMed has no adequate remedy at law. The “actions and assertions made
`
`by ICU regarding the infringement of the InVision-P1us® NEUTRAL® I.V. Connector
`
`System of the ‘204 patent have caused and, if not enjoined, will continue to cause
`
`irreparable injury to RyMed.
`
`COUNT 4
`
`DECLARATORY JUDGMENT O®F NON-IVNF%IN.GEMENT OF THE .‘592
`PATENT BY THE INVISION-PLUS NEUTRAL I.V. CONNECTOR SYSTEM
`
`44. RyMed realleges and incorporates herein by reference the matters alleged
`
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`C.OMPLAINT'FOR DECLARATORY JUDGMENT, LANHAM ACT
`VIOLATIONS, TRADEMARK INFRINGEIVIENT, UNFAIR
`COMPETITION, AND RELATED CLAIMS
`
`DM US:20693563 5 C
`
`LP
`
`

`
`in Paragraphs 1 through 43 of this Complaint.
`
`45. An actual and justiciable controversy exists between RyMed and ICU as to
`
`the non—infringement of the ‘S92 patent by the InVision-Plus® NEUTRAL® l.V.
`
`Connector System.
`
`46. RyMed’s InVision-Plus® NEUTRAL® I.V. Connector System has not
`
`infringed and does not infiinge any valid and enforceable claim of the ‘592 patent,
`either directly, indirectly, literally, or under the doctrine of equivalents.
`
`47. RyMed has no adequate remedy at law. The actions and assertions made
`
`by ICU regarding infringement of the InVision-Plus® NEUTRAL® 'I.V. Connector
`
`System of the ‘592 patent have caused and, if not enjoined, will continue to cause
`
`irreparable injury to RyMed.
`
`COUNT 5
`
`DECLARATORY JUDGMENT OI{’®NON-INFRQVGEMENT OF THE ‘866
`PATENT BY THE INVISION-PLUS NEUTRAL WITH MODIFIED BOOT
`
`RyM.ed.rea1lege-s and incorporates herein by reference the matters alleged
`48.
`in Paragraphs 1 through 47 of this Complaint.
`
`49. An actual and justiciable controversy exists between RyMed and ‘ICU
`
`regarding the non—infringement of the ‘866 patent by the InVision—Plus® NEUTRAL®
`
`with Modified Boot.
`
`50. RyMed’s I'n'Vision—Plus® NEUTRAL® with Modified Boot has not
`
`infiringed and does" not infiinge any valid and enforceable claim of the ‘866 patent,
`
`either directly, indirectly, literally, or under the doctrine of equivalents.‘
`
`51. RyMed has no adequate remedy at law. The threat of actions and
`
`assertions by ICU regarding .non-infringement by the InVision-P1us® NEUTRAL® with
`
`.Modified Boot of the ‘866 patent have caused and, if not enjoined, will continue to
`
`cause irreparable injury to RyMed.
`
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`DM US:20693563 5
`
`-11-
`
`COMPLAINT FOR DECLARATORY JUDGMENT, LANHAM AC1‘
`VIOLATIONS,
`INFRINGEMENT, UNI-TA