Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA550872
`ESTTA Tracking number:
`07/29/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057267
`Defendant
`Minitub GMBH
`JAMES H JOHNSON JR
`SUTHERLAND ASBILL & BRENNAN LLP
`999 PEACHTREE STREET NW
`ATLANTA, GA 30309-3996
`UNITED STATES
`patent.docket@sutherland.com
`Motion to Suspend for Civil Action
`James H. Johnson, Jr.
`james.johnson@sutherland.com, ann.fort@sutherland.com,
`jeremy.spier@sutherland.com, patent.docket@sutherland.com
`/James H. Johnson, Jr./
`07/29/2013
`Motion to Suspend - ANDROSTAR.pdf(4640319 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Minitube of America, Inc.,
`
`E-FILING
`
`Cancellation No. : 92057267
`In re Registration No. :
`2,493,812
`For the Mark
`:
`ANDROSTAR
`Registered on
`:
`October 2, 2001
`
`Petitioner,
`
`
`
`v.
`
`
`
`
`
`
`Minitub Gmbh,
`
`
`
`
`
`Registrant.
`
`
`
`
`
`
`
`REGISTRANT’S MOTION TO SUSPEND PROCEEDINGS
`
`In the matter of the above-identified Cancellation No. 92057267, Minitub Gmbh
`
`(“Registrant”) hereby moves the Trademark Trial and Appeal Board to suspend the cancellation
`
`proceeding against Registrant pursuant to 37 C.F.R. § 2.117(a) in light of a civil action now
`
`pending between the parties.
`
`SUMMARY OF FACTS
`
`
`
`On June 14, 2013, Petitioner filed a civil action against Registrant in the United States
`
`District Court for the Eastern District of Wisconsin. The civil action asserts claims of common
`
`law trademark infringement and federal and state law unfair competition The civil action is
`
`docketed as Civil Action No. 2:13-cv-00685 AEG, and a file-stamped copy of the Complaint is
`
`attached hereto as Exhibit A.
`
`ARGUMENT
`
`
`
`Pursuant to Trademark Rule 2.117(a), the Trademark Trial and Appeal Board may
`
`suspend proceedings pending before the Board when the parties are involved in a civil action that
`
`21926211.1
`
`

`
`may have a bearing upon the Board proceeding. Indeed, the Board will ordinarily suspend
`
`proceedings when a civil action for trademark infringement is pending between the parties. See
`
`TBMP § 510.02(a) (citing, inter alia, Other Telephone Co. v. Connecticut National Telephone
`
`Co., 181 USPQ 125 (TTAB 1974)).
`
`The civil action now pending before the United States District Court for the Eastern
`
`District of Wisconsin involves issues in common with the instant opposition proceeding.
`
`Specifically, Petitioner alleges in the federal complaint that the mark at issue in this cancellation
`
`proceeding, ANDROSTAR, belongs to Petitioner. Petitioner further alleges that Registrant’s use
`
`of the mark amounts to infringement, false advertising under the Lanham Act, false marketing
`
`under Wisconsin statutory law and unfair competition under common law. All of these claims
`
`rely on a finding that Petitioner, not the Registrant, is the proper owner of the ANDROSTAR
`
`mark (which it is not). Petitioner’s allegations of priority and claims for trademark infringement
`
`overlap with and have a clear bearing upon Petitioner’s allegations in the cancellation
`
`proceeding, and the United States District Court’s decision in the civil action may be binding
`
`upon the Trademark Trial and Appeal Board. See e.g. Danskin, Inc. v. Dan River, Inc., 182
`
`USPQ 370, 372 (CCPA 1974) (affirming the Board’s decision granting summary judgment
`
`based upon disposition of a prior civil action).
`
`WHEREFORE, Registrant respectfully requests that the Trademark Trial and Appeal
`
`Board order a suspension of the instant cancellation proceeding pending the outcome of the civil
`
`action in United States District Court for the Eastern District of Wisconsin.
`
`
`
`
`
`
`
`
`
`Date: July 29, 2013,
`
`
`
`
`
`
`
`By:
`
`Respectfully submitted,
`
`SUTHERLAND ASBILL & BRENNAN LLP
`
`/James H. Johnson/
`James H. Johnson, Esq.
`
`21926211.1
`
`2
`
`

`
`Ann G. Fort, Esq.
`Jeremy D. Spier, Esq.
`
`999 Peachtree Street, NE
`Atlanta, Georgia 30309-3996
`404-853-8395 (telephone)
`404-853-8806 (facsimile)
`James.Johnson@Sutherland.com
`Attorneys for Applicant
`
`21926211.1
`
`3
`
`

`
`
`PROOF OF SERVICE
`[F.R.C.P. Rule 5, F.R.A.P. 25]
`
`I declare that I am employed in Atlanta, Georgia; I am over the age of 18 and am not a
`party to the above identified action; my business address is 999 Peachtree St., NE, Atlanta, GA
`30309-3996. On the date set forth below, I served a true and accurate copy of the document(s)
`entitled: REGISTRANT’S MOTION TO SUSPEND PROCEEDINGS on the party(ies) in
`this action by placing said copy(ies) in a sealed envelope each addressed as follows:
`
`
`Thomas P. Heneghan
`Whyte Hirschboeck Dudek S.C.
`P.O. Box 1379
`Madison, Wisconsin 53701
`
`
`
`[By First Class Mail] I am readily familiar with Sutherland Asbill & Brennan
`
`LLP's practice for collecting and processing documents for mailing with the United States Postal
`Service. On the date listed herein, following ordinary business practice, I served the within
`document(s), by placing a true copy thereof, enclosed in a sealed envelope, with postage thereon
`fully prepaid, for collection and mailing with the United States Postal Service where it would be
`deposited with the United States Postal Service that same day in the ordinary course of business.
`
`
`[By Overnight Courier] I caused each envelope to be delivered by a commercial
`
`carrier service for overnight delivery to the offices of the addressee(s).
`
`
`[By Hand] I directed each envelope to the party(ies) so designated on the service
`
`list to be delivered by courier this date.
`
`
`[By Facsimile Transmission] I caused said document to be sent by facsimile
`
`transmission to the fax number indicated for the party(ies) listed above.
`
`
`[By Electronic Transmission] I caused said document to be sent by electronic
`
`transmission to the e-mail address(es) indicated for the party(ies) listed above.
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct and that this
`declaration was executed this date at Atlanta, Ga.
`
`
`
`Dated: July 29, 2013
`
`
`
`
`
`____________________________
`
`
`
`
`
`21926211.1
`
`
`
`
`
`4
`
`

`
` EXHIBIT A
`EXHIBIT A
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF WISCONSIN
`
`MINITUBE OF AMERICA, INC.
`
`Plaintiff,
`
`vs.
`
`Civil Action No; 13-cv—685
`
`JURY TRIAL DEMANDED
`
`REPRODUCTION PROVISIONS, LLC;
`MINITUB GMBH; and
`MINITUBE INTERNATIONAL AG
`
`Defendants.
`
`
`COMPLAINT
`
`Plaintiff, Minitube of America,
`
`Inc.
`
`(“MOFA”), brings
`
`this action for patent
`
`infringement, false patent marking, trademark infringement, false designation of origin, and
`
`unfair
`
`competition
`
`against defendants Reproduction Provisions, LLC (“Reproduction
`
`Provisions”) and Minitiib GmbH and Minitube International AG (collectively “Minitt'1b /MTI”)
`
`and (collectively, “Defendants”). MOFA alleges as follows:
`
`PARTIES
`
`1.
`
`MOFA is a Wisconsin corporation with a principal place of business at 419
`
`Venture Court, Verona, Wisconsin 53593. MOFA is a leading provider of assisted reproduction
`
`technologies for porcine, bovine, equine and canine species in North America.
`
`2.
`
`Reproduction Provisions, formerly doing business as ITSI Provisions LLC and
`
`Prairie Provisions, is a Wisconsin limited liability company with a principal place of business at
`
`320 S. Main Street, Walworth, Wisconsin 53184
`
`3.
`
`Minitiib Gmbl-I is a German limited liability company with a principal place of
`
`WI-IDf9549247.l
`
`1
`
`Case 2:13—cv—00685-AEG Filed 06114113 Page 1 of 14 Document 1
`
`

`
`business at I-lauptstrasse 41, 84184 Tiefenbach, Germany.
`
`4.
`
`Minitube International AG is a closely held German company with a principal
`
`place of business at Hauptstrasse 41, 84184 Tiefenbach, Germany.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is an action for patent infringement under 35 U.S.C. § 271, false patent
`
`marking under 35 U.S.C. § 292, trademark infringement under 15 U.S.C. § 1114, and false
`
`advertising and unfair competition under 15 U.S.C. § 1125, Wis. Stat. § 100.18 and Wisconsin
`
`common law.
`
`6.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a); and 35 U.S.C. § 271.
`
`7.
`
`This Court has supplemental subject matter jurisdiction over the Wisconsin state
`
`law claims pursuant to 28 U.S.C. § 1367(a). The Wisconsin state claims asserted herein are so
`
`related to the federal claims as to form part of the same case or controversy.
`
`8.
`
`This Court has personal jurisdiction over the Defendants because defendant
`
`Reproduction Provisions has its principal place of business in this district and does substantial
`
`business here.
`
`In addition, defendants Minittib and MTI have appointed Reproduction
`
`Provisions to be their exclusive distributor in the United States. Accordingly, the Defendants
`
`have purposely availed themselves of Wisconsin’s laws, services and/or other benefits and
`
`therefore should reasonably anticipate being hailed into one or more of the courts within the
`
`State of Wisconsin.
`
`9.
`
`On information and belief, venue is proper pursuant to 28 U.S.C. §1391 (b) and
`
`(e) and 28 U.S.C. § 1400.
`
`wnn/95492411
`
`2
`
`Case 2:13—cv—00685-AEG Filed 06114113 Page 2 of 14 Document 1
`
`

`
`FACTUAL BACKGROUND COMMON TO ALL CLAIMS
`
`A.
`
`Background of the Parties
`
`10.
`
`MOFA, Minitiib/MTI and Reproduction Provisions all operate in the animal
`
`reproduction technology industry and all supply similar types of goods and services.
`
`11.
`
`The owners of MOFA and Minitiib/MTI are members of the same family.
`
`12.
`
`For more than twenty—six (26) years, MOFA and Minitfib GmbH peacefully oo-
`
`existed and served separate geographic markets.
`
`13.
`
`During that time, MOFA has primarily operated in the North American market:
`
`Canada, the United States of America and Mexico.
`
`14.
`
`Minitiib and later MTI, have primarily operated in Germany and other countries
`
`within the European Union.
`
`15.
`
`MOFA and Minittib/MTI have collaborated extensively over the years with
`
`manufacturing efforts, innovation and sales of animal reproduction technology products and
`
`research.
`
`16.
`
`However, they never entered into any formal agreements or business relationship
`
`and have always existed as separate business entities.
`
`17.
`
`MOFA and Minittib/MTI have however, on two separate occasions, entered into
`
`discussions to potentially merge their companies. Those discussions were unsuccessful.
`
`18.
`
`As a result, MOFA and MinitI'.lb/'MTI have operated and continue to operate
`
`independently in their distinct markets without any formal written coexistence or other
`
`agreements.
`
`19.
`
`In 2013, Minitfib/MTI partnered with Reproduction Provisions to enter the United
`
`wnn/9549247.]
`
`3
`
`Case 2:13—cv—00685-AEG Filed 06I14I13 Page 3 of 14 Document 1
`
`

`
`States market for animal reproduction technology, and began using MOFA’s intellectual
`
`property without authorization or permission.
`
`B.
`
`MOFA Intellectual Propem at Issue.
`
`20.
`
`In 1998, MOFA filed a patent application for its Boar Semen Collection Bag,
`
`known and marketed as the “US BAG.” U.S. Patent Number 5,961, 503 (“‘503 Patent”) issued
`
`on October 5, 1999 for the same. A true and correct copy of the ‘503 Patent is attached as
`
`Exhibit A.
`
`21.
`
`MOFA has exclusive rights in and to the ‘S03 Patent. A true and correct copy of
`
`the ‘503 Patent Assignment documentation is attached as Exhibit B.
`
`22.
`
`MOFA manufactures its patented US BAG product and sells it throughout the
`
`United States:
`
`23.
`
`MOFA also owns valuable federal and common law rights in the trademarks it
`
`uses in the United States, including (without limitation):
`
`a. MINITUBE, U.S. Reg. No. 2,038,251;
`
` U.S. Reg. No. 2,051,949;
`
`wnn/9549247.:
`
`4
`
`Case 2:13—cv—OO685-AEG Filed 06/14/13 Page 4 of 14 Document 1
`
`

`
`1
`
`c.
`
`U.S. Reg. No. 2,096,385;
`
`d. AUTOMATE, U.S. Reg. No. 3,250,053
`
`e. ANDROHEP, U.S. Reg. No. 2,033,439;
`
`f. US BAG, U.S. Serial No. 85/954,645;
`
`g. ANDROSTAR, U.S. Seriai No. 85/944,848
`
`(collectively “MOFA Trademarks”). A true and correct copy of the registration certificates
`
`and/or U.S. trademark applications for the listed MOFA Trademarks is attached as Exhibit C.
`
`C.
`
`Minittib/MTI’s Recent Activities in the United States
`
`24.
`
`On May 31, 2013, Minitiib/MTI issued a press release announcing the
`
`appointment of Reproduction Provisions as their exclusive distributor for all products and
`
`services in the United States and Canada as of January 6, 2013. A true and correct copy of the
`
`press release is attached as Exhibit D.
`
`25.
`
`Reproduction Provisions issued a similar press release on May 30, 2013,
`
`announcing that it is the exclusive distributor in the USA and Canada for MTI’s animal artificiai
`
`insemination and embryo transfer equipment and supplies. A true and correct copy of the press
`
`reiease is attached as Exhibit E.
`
`26.
`
`On June 5-7, 2013, MTI and Reproduction Provisions attended the World Pork
`
`Expo in Des Moines, Iowa (“Expo”) as vendors.
`
`WI-IDf9549247.1
`
`5
`
`Case 2:13-cv—00685-AEG Filed 06/14/13 Page 5 of 14 Document 1
`
`

`
`
`
`27.
`
`At the Expo, MTI and Reproduction Provisions announced their new relationship
`
`and began selling and/or offering products for sale, including the following “US Bag” product:
`
`WHD1'954924‘J.l
`
`6
`
`Case 2:13—cv—00685-AEG Filed 06114113 Page 6 of 14 Document 1
`
`

`
`.
`
`Prior Relationship with Reproduction Provisions and Its Owners
`
`28.
`
`Reproduction Provisions and its owners, Richard and Debra Schoenbeck,
`
`previously operated their business under the names ITSI, LLC, ITSI Provisions, LLC and Prairie
`
`Provisions.
`
`29.
`
`In 1999, without the permission from MOFA, the Schoenbecks and Prairie
`
`Provisions began manufacturing, offering for sale and seliing products that infringed upon one or
`
`more claims of the ‘S03 Patent.
`
`30.
`
`On November 29, 1999, MOFA filed a patent infringement lawsuit against Prairie
`
`Provisions in the United States District Court for the Western District of Wisconsin. See Case #:
`
`3 :00-cv-00749-bbc.
`
`31.
`
`That litigation resulted in Prairie Provision’s admission of infringement and a
`
`consent decree, which was entered on May 10, 2000. A true and correct copy of the consent
`
`decree is attached as Exhibit F.
`
`wHDI9549247.1
`
`7
`
`Case 2:13-cv-OD685—AEG Fiied 06fl4l13 Page 7 of 14 Document 1
`
`

`
`E.
`
`Related Intellectual Property Actions
`
`32.
`
`On February ‘E, 1999, Minitiib GmbH filed a U.S. trademark application for the
`
`ANDROSTAR trademark based on its foreign trademark application under Section 44(e) of the
`
`Lanham Act, 15 U.S.C. § 1126(6), and based on an intent-to-use the mark in the United States.
`
`33.
`
`On October 2, 2001, the ANDROSTAR trademark obtained federal registration,
`
`U.S. Reg. No. 2,493,812. A true and correct copy of the registration certificate for the
`
`ANDROSTAR Trademark is attached as Exhibit G.
`
`34.
`
`While use in the United States is not required to obtain federal registration under
`
`Section 44(e) of the Lanham Act, use is required to maintain the registration. In 2007 and 2011,
`
`Minitiib filed renewal documentation, including signed declarations of use of the ANDRO STAR
`
`trademark in the United States.
`
`35.
`
`On information and belief, those signed declarations were false.
`
`36.
`
`On May 29, 2013, MOFA filed a Petition to Cancel the ANDROSTAR trademark
`
`application with the U.S. Trademark Trial and Appeal Board, Cancellation No. 92057567.
`
`37.
`
`MOFA’s Petition to Cancel the ANDROSTAR trademark application is based on
`
`fraud, abandonrnentfnon—use and likelihood of consumer confusion. A true and correct copy of
`
`the Petition to Cancel is attached as Exhibit H.
`
`COUNT I — PATENT INFRINGEMENT
`
`38.
`
`MOFA incorporates by reference the allegations set forth in paragraphs 1 — 37 of
`
`this Coinplaint as though fully set forth herein.
`
`39.
`
`Defendants have infringed and continue to infringe the ‘503 Patent by making,
`
`using, selling and offering to sell and importing their infringing US Bag product.
`
`40.
`
`By making, using, selling and offering to sell and importing infringing products,
`
`wuo/9549247.:
`
`8
`
`Case 2:13—cv—O0685—AEG Filed O6l14l13 Page 8 of 14 Document 1
`
`

`
`Defendants have infringed the ‘S03 Patent directly, contributorily and/or through inducement.
`
`The defendants have engaged in the foregoing conduct in the United States without authority
`
`from Plaintiff and during the term of the ‘S03 Patent.
`
`41.
`
`42.
`
`Defendants are wilifuliy and intentionally infringing upon the ‘S03 Patent.
`
`Upon information and belief, Defendants will continue to infringe the ‘S03 Patent
`
`unless and until enjoined by the Court.
`
`43.
`
`Defendant’s infringing conduct has caused and will continue to cause damage to
`
`MOFA, and is causing irreparable harm to MOFA for which there is no adequate remedy at law.
`
`COUNT II — FALSE PATENT MARKING
`
`44.
`
`MOFA incorporates by reference the allegations set forth in paragraphs 1 ~ 43 of
`
`this Complaint as though fully set forth herein.
`
`45.
`
`Defendants have affixed MOFA’s ‘S03 Patent number to their infringing US Bag
`
`product.
`
`WI-iD!9549247.l
`
`9
`
`Case 2:13~cv-00685-AEG Filed 06114113 Page 9 of 14 Document 1
`
`

`
`46.
`
`On information and belief, Defendants have marked their product with the ‘S03
`
`Patent number with the intent of counterfeiting or imitating the mark of MOFA, and/or with the
`
`intent of deceiving the public and inducing them to believe that the product was made, offered
`
`for safe, soid, or imported into the United States by or with the consent of MOFA.
`
`47.
`
`On information and belief, MOFA has suffered a competitive injury as a result of
`
`Defendants’ false marking.
`
`48.
`
`MOFA is therefore entitled to recover damages for Defendants’ false marking in
`
`an amount to be determined at trial.
`
`COUNT III - TRADEMARK INFRINGEMENT
`
`49.
`
`MOFA incorporates by reference the allegations set forth in paragraphs 1 — 48 of
`
`this Complaint as though fully set forth herein.
`
`50. Without authorization, Defendants have used trademarks that are the same or
`
`substantially similar to the MOFA Trademarks on products that are the same or substantially
`
`similar to MOFA’s products.
`
`51.
`
`Defendants’ unauthorized use of the MOFA Trademarks on its products and
`
`marketing materials in the United States constitutes infringement of MOFA’s registered and
`
`common law trademark rights in its MOFA Trademarks.
`
`52.
`
`Defendants’ unauthorized use of the MOFA Trademarks in connection with
`
`identical or nearly identicai goods is likely to cause confusion, mistake and deception of the
`
`public as to the identity and origin of Defendants’ and MOFA’s goods.
`
`53.
`
`On information and beiief, the Defendants are intentionaliy and wiilfully
`
`infringing upon the MOFA Trademarks.
`
`54.
`
`Defendants’ infiinging conduct has caused and will continue to cause damage to
`
`WHD/9549247.]
`
`10
`
`Case 2:13—cv-O0685—AEG Filed 06/14/13 Page 10 of 14 Document 1
`
`

`
`MOFA, and is causing irreparable harm to MOFA for which there is no adequate remedy at law.
`
`COUNT IV — FALSE ADVERTISING UNDER THE LANHAM ACT
`
`55.
`
`MOFA incorporates by reference the allegations set forth in paragraphs 1 — 54 of
`
`this Complaint as though fully set forth herein.
`
`56.
`
`Defendants have manufactured and offered for sale products which perform
`
`similar functions and look substantially the same as MOFA products.
`
`57.
`
`Defendants have used the unregistered MOFA Trademarks, such as US BAG and
`
`ANDROSTAR, in a manner that causes deception and confusion in the marketplace.
`
`58.
`
`On information and belief, Defendants are also making false claims that their
`
`products ~— including those that infringe the ‘S03 Patent - are superior to the MOFA products.
`
`59.
`
`On information and belief, Defendants are aiso falsely claiming that customers
`
`cannot purchase MOFA products because MOFA is not authorized to sell in the United States.
`
`60.
`
`The unauthorized use of MOFA Trademarks, as well as the false and misleading
`
`statements and actions have been made in interstate commerce, have deceived and have the
`
`capacity to deceive a substantial segment of customers, and are likely to influence purchasing
`
`decisions.
`
`61.
`
`The actions of Defendants constitute unfair competition and false advertising in
`
`violation of 15 U.S.C. § 1125(a).
`
`62.
`
`Defendants’ unfair competition and false advertising has caused and will continue
`
`to cause substantial harm to MOFA.
`
`63.
`
`Defendants’ actions have caused and will continue to cause MOFA to be
`
`irreparably harmed for which there is no adequate remedy at law.
`
`wno/95492411
`
`1 1
`
`Case 2:13-cv—00685—AEG Filed 06/14/13 Page 11 of 14 Document 1
`
`

`
`COUNT V — FRAUDULENT REPRESENTATIONS
`
`UNDER WIS. STAT. § 190.18
`
`64.
`
`MOFA incorporates by reference the allegations set forth in paragraphs 1 — 63 of
`
`this Complaint as though fully set forth herein.
`
`65.
`
`Defendants,
`
`in the course of engaging in the development, manufacture,
`
`promotion and sale of their US Bag and other artificial insemination products, have made unfair,
`
`untrue, deceptive and misleading statements to the public with the intent to sell their infringing
`
`products in violation of Wis. Stat. § 100.18.
`
`66.
`
`Unless Defendants are enjoined by this Court from continuing their unfair
`
`competition and unfair trade practices, MOFA will continue to suffer irreparable harm and
`
`impairment of the value of its patent rights, trademark rights, and commercial products.
`
`67.
`
`As a result of Defendants’ continuing activities in violation of the common law of
`
`the State of Wisconsin andfor under Wis. Stats. § 100.18, MOFA has suffered and will continue
`
`to suffer damages.
`
`68.
`
`MOFA is entitled to a permanent
`
`injunction prohibiting Defendants from
`
`manufacturing, marketing, selling, using, importing, exporting and/or distributing its products in
`
`connection with the MOFA Trademarks, and also to an award of damages, enhancedfpunitive
`
`damages and attorneys’ fees under Wis. Stats. § 100.18.
`
`COUNT VI — COMMON LAW UNFAIR COMPETITION
`
`69.
`
`MOFA realleges the allegations contained in paragraph 1 through 68 as if fully set
`
`forth herein.
`
`70.
`
`The acts of Defendants complained of herein constitute unfair competition under
`
`Wisconsin law.
`
`71.
`
`As a result of these actions, MOFA has been damaged in an amount to be
`
`WHD:‘9549247.i
`
`12
`
`Case 2:13-ev—OO685—AEG Filed 06f14/13 Page 12 of 14 Document 1
`
`

`
`determined at trial.
`
`DAMAGES & INJUNCTIVE RELIEF
`
`72.
`
`As a result of Defendants’ actions, MOFA has suffered actual and consequential
`
`damages and Defendants have improperly profited from their unlawful actions.
`
`73.
`
`MOFA seeks recovery of monetary damages, including damages for lost profits,
`
`unjust enrichment and benefits received by Defendants as a result of their actions.
`
`74.
`
`MOFA seeks enhanced and punitive damages due to the intentional, willful,
`
`malicious and outrageous nature of Defendants’ conduct.
`
`75.
`
`MOFA seeks recovery of its attorneys’ fees due to the willful and intentional
`
`nature of Defendants’ violations of State and Federal law.
`
`76.
`
`To the fullest extent permitted under equity and law, MOFA also seeks permanent
`
`injunctive relief enjoining Defendants from continuing their unlawful, unfair and infringing
`
`practices.
`
`JURY DEMAND
`
`77.
`
`MOFA hereby demands trial by jury of all claims pursuant to Fed. R. Civ. P. 38.
`
`PRAYER FOR RELIEF
`
`MOFA asks that the Defendants be required to appear, answer and stand trial, and for the
`
`Court to enter judgment as follows:
`
`A. An order pursuant to 15 U.S.C. § 1118 to deliver up for destruction all containers,
`
`labels, signs, prints, packages, wrappers, advertising, promotional materials or the
`
`like in the possession of Defendants and their distributors bearing any kind of indicia
`
`in violation of 15 U.S.C. §§ 1114 and/or 1125.
`
`B. Actual and statutory damages as aiiowed by applicabie law.
`
`was/95492411
`
`1 3
`
`Case 2:13—cv—00685-AEG Filed 06l14l13 Page 13 of 14 Document 1
`
`

`
`C. Costs and attorneys’ fees as allowed by applicable law.
`
`D. Exemplary and punitive damages as allowed by applicable law.
`
`E. Permanent injunctive relief.
`
`F. Prejudgment and post—judgment interest as allowed by applicable law.
`
`G. Any other remedy to which MOFA may be entitled under law and equity.
`
`Dated: June 14, 2013
`
`Respectfully Submitted,
`
`/.s'/ Thomas P. Heneghan
`Thomas P. Heneghan
`State Bar No. 1024057
`
`theneghan@whdlaw.com
`Melinda S. Giftos
`State Bar No. 1056609
`
`mgiftos@whd1aw.com
`
`WHYTE HIRSCHBOECK DUDEK S.C.
`P.O. BOX 1379
`
`Madison, WI 53701
`(608) 255-4440 (telephone)
`(608) 258—7138 (facsimile)
`
`Attorneys for Plaintzfl
`Minitube of America, Inc.
`
`WHD/9549247.l
`
`14
`
`Case 2:13—cv—OO685~AEG Fited 06l14l13 Page 14 of 14 Document 1
`
`

`
`llllllll||lI|I||||I|||I|II|Illll|I||lllllllllllllllllllllllllllllllllllllll
`
`USOO5961503A
`
`Umted States Patent
`
`E19]
`
`{11} Patent Number:
`
`5,961,503
`
`Simmct ct at.
`£45] Date of Patent:
`Oct. 5, 1999
`
`
`[54] BOAR SEMEN COLLECTION BAG
`
`[751
`
`Inventors: Ludwig 0. Simmet, Verona, Wis.;
`Chflsflml J‘ Slmmet’ Landshut’
`Gummy
`[731 Assiguee: Minitubc of America, Inc., Verona,
`Wis.
`
`11/1994 Fleur)’-
`5,353,553
`771996 Lindholm-Ventoia.
`S,54U,670
`5.559.235 10/1995 F1'="1'Y-
`Primary Examr'ner—John G. Weiss
`Assrlstrznt Examiner—Catheri1ze Cogut
`Ammey’ Agent‘ or Fim—J"au-‘mp & Clark LLP
`{57}
`ABSTRACT
`
`.: 0
`
`A .
`9I078’168
`PP1 No
`pl}
`May 13, I998
`Filed:
`[22]
`Int. Cl.” ...................................................... A611? 51453
`[51]
`‘
`‘
`[52] U'5' U‘ ---------------- --
`60413493 604'/347
`[53] Field 0f S‘-““‘cl‘
`----- --
`---------- 504/90¢ 349:
`604/347, 327; 500/33
`
`[56]
`
`Refere““*"”' Cited
`U_S_ PATENT DOCEJMENTS
`
`3.539.012 11/1970 Mi1€Nei1-
`Eeeilclef In cl at '
`Dc
`_
`EH1986 Dyer '
`9/1987 Douglas-Harrsilton .................. 604/349
`5/1988 Emery .
`1/1991 Inagaki et at. .
`
`,
`_
`4,620’531
`4,690,678
`4,744,352
`4,983,286
`
`Two flat segments of flexible piastic are sealed along the
`edges and at the bottom, to present an upwardly opening
`bag. Arectangular sheet of filter material is folded to form
`filter pouch and positioned within the collapsed collection
`gag with the u
`d
`,
`f
`.
`,
`,
`pper e gee 0 the folded filter maternal halves
`fused to opposing sides of the bag above a perforation or line
`of weakened material. When the bag is disposed within a
`coileclion rang, the upper portions of the bag extend as a
`shroud around the exterior of the mag, and the filter material
`is stretched out across the opening to the bag. Ahoar’s penis
`is directed _to ejaculate into the song, arid the ejaculate get
`plug 15 retained on the filter material, while the semen passes
`through the filter material into the coliection bag. When
`Collection is complete, the shroud and the attached filter
`.
`.
`.
`nifaterrai are separated from the collection bag and disposed
`0 '
`
`13 Claims, 3 Drawing Sheets
`
`Case 2:13—cv-0O685—AEG Filed 06/14/13 Page 1 of 9 Document 1-1
`
`

`
`U.S. Patent
`
`Oct. 5, 1999
`
`Sheet 1 of3
`
`5,961,503
`
`Case 2:13—cv—00685—AEG Filed O6!14I13 Page 2 of 9 Document 1-1
`
`

`
`U.S. Patent
`
`Oct. 5, 1999
`
`Sheet 2 of3
`
`5,961,503
`
`Case 2:13—cv-00685-AEG Filed 06/14/13 Page 3 of 9 Document 1-1
`
`

`
`US. Patent
`
`Oct. 5, 1999
`
`Sheet 3 of3
`
`5,961,503
`
`Case 2:13~cv-O0685—AEG Filed 06114113 Page 4 of 9 Document 1-1
`
`

`
`5,961,503
`
`1
`BOAR SEMEN COLLECTION BAG
`
`FIELD OF THE INVENTION
`
`The present invention relates to equipment in support of
`animal artificial insemination in general, and to apparatus
`for collecting boar semen in particular.
`
`BACKGROUND OF THE INVENITON
`
`As with all fields of modern commerce, agricultural
`production increasingly places a premium on efiicient use of
`resources and productivity of investment. Mechanical
`advancements in plowing, seeding, and harvesting machin-
`ery have for decades contributed to increasing yields ofplant
`crops. Although the active employment of similar produc-
`tivity enhancing technology in animal crops has trailed plant
`culture automation, such advancements are now spreading
`to meat producers.
`The culture of pigs for slaughter has particularly demand-
`ing economics. In order to maximize the crop of piglets, a
`producer seeks to have as few boar for the number of fertile
`sows as possible. A boar is capable of producing on average
`sufficient semen to artificially inseminate 15 sows twice a
`week, although a boar is only capable of inseminating two
`sows a week through mating. In a traditional practice, the
`sows to be inseminated are aligned for service by a boar, and
`are inseminated twice. Because a litter of as many as 12
`piglets is desirable, it is important that each sow receive
`sufiicient semen. Hence, in practice, a pork producer must
`retain many more boar than is optimal. Furthermore,
`the
`actual coupling of the boar with the sows requires additional
`labor for supervision which adds to the overall cost of the
`pigs produced.
`technology has made it pos-
`Artificial insemination
`sible to collect semen from a boar without contact with the
`sow, and to then irisemiriate each sow with a controlled and
`tested quantity of semen in an isolated environment. With
`modern AI techniques, a 1,000 sow herd can be adequately
`handled with only three to four boars.
`The economic benefits of A1 are well recognized.
`Nevertheless,
`the biological processes involved place
`demanding burdens on the practitioners. Unlike plant
`culture, in which seeds and seedlings are naturally adapted
`to survive in inclement weather and dirty conditions, AI
`products must be collected, treated, and transported under
`hygienic conditions and at controlled temperatures.
`The collection of the boar semen itself is at present far
`from automated. An agricultural worker must lead the boar
`into the collection area and induce the animal to mount a
`simulated sow or collection dummy. Once ejaculation
`begins, the worker positions a plastic bag, retained in an
`insulated rnug,
`to receive the ejaculate. Because only a
`single worker is involved, one hand manipulates the boar's
`penis to ejaculate into the mug, while the other hand
`maneuvers the mug to receive the biological material. The
`collection is further complicated by the fact
`that fluids
`present on the prepuce of the boar’s penis are toxic to the
`semen. Hence it is important that they not contaminate the
`collected semen.
`
`Because the boar ejaculate contains a gel plug fraction, it
`is necessary to filter this more viscous fraction from the
`semen. In conventional collection practices, a sheet of filter
`paper or gauze material was positioned over the opening to
`the mug and held in place with a rubber band. The operation
`of positioning and securing the filter required some manual
`dexterity and skill, and presented many opportunities for
`
`5
`
`‘I0
`
`15
`
`20
`
`2.5
`
`30
`
`35
`
`40
`
`45
`
`50
`
`55
`
`60
`
`65
`
`2
`contamination of the semen both during collection and
`during separation of the filter from the collection bag.
`What is needed is a boar semen collection bag which is
`easier to install in the collection mug, and which is condu-
`cive to hygienic collection practices to facilitate collection
`of semen of optimum quality.
`SUMMARY OF THE INVENTION
`
`The boar semen collection bag of this invention is formed
`with an expandable filter, which is interposed in the ejaculate
`stream by installing the bag in a collection mug. The
`hygienic bag is comprised of two flat segments of flexible
`plastic sealed along the edges and at the bottom, so the top
`is open. A rectangular sheet of filter material is folded and
`formed into a filter pouch which is positioned within the
`collapsed collection bag, with the upper edges of the folded
`filter material halves fused to opposing sides of the bag
`above a perforation or line o[ weakened material. When the
`bag is disposed within a collection mug, the upper portions
`of the bag extend as a shroud around the exterior of the mug,
`and the filter material is stretched out across the opening to
`the bag. The boar's penis is directed to ejaculate into the
`mug, and the ejaculate gel plug is retained in the filter pouch,
`while the semen passes through the filter material into the
`collection bag. When collection is complete, the shroud and
`the attached filter material are separated from the collection
`bag and disposed of, thereby preserving the semen from
`contact with the boar prepuce and the gel plug.
`It
`is an object of the present
`invention to provide a
`collection bag for boar semen which is easy to install within
`a collection mug.
`It is an additional object of the present invention to
`provide a collection bag for boar semen which may be
`installed within a collection mug without contact with the
`installer’s hands to preserve a hygienic contact surface on
`the interior of the bag.
`It is another object of the present invention to provide a
`collection bag for boar semen which prevents the committ-
`gling of undesirable ejaculate fractions with the collected
`semen.
`
`It is a further object of the pre