Case: 1:17-cv-08818 Document #: 1 Filed: 12/07/17 Page 1 of 15 PageID #:1

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

FRANTZ DESIGN INCORPORATED, )

d/b/a Frantz Design Inc., )
a Texas Corporation, )
) Case No.:
Plaintiff,
)
)
V. )
) Jury Trial Demand
)
DENTSPLY SIRONA, INC., )
a Delaware Corporation, )
)
Defendant.

COMPLAINT FOR DESIGN PATENT

INFRINGEMENT AND UNFAIR COMPETITION

Plaintiff Frantz Design Incorporated d/b/a Frantz Design Inc. (Plaintiff or Frantz), by

and through its undersigned counsel against Defendant Dentsply Sirona, Inc. (Defendant or

Dentsply), respectfully alleges and submits as follows pursuant to Rule 3 and Rule 15(a)(l)

of the Federal Rules of Civil Procedure:

THE PARTIES

1. Plaintiff Frantz is a Texas Corporation with its principal place of business

located at 3202 Oakmont Blvd., Austin, Texas, 78703.

2. Upon information and belief, Defendant Dentsply is a Delaware corporation

with a principal United States executive office located at Susquehanna Commerce Center, 221

W. Philadelphia Street, Ste. 60W, York, PA 17401; its international headquarters located at

Sirona StraBe 1, A-5071 Wals bei Salzburg, Austria; and a manufacturing and distribution

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facility located at 901 W. Oakton St., Des Plaines, Illinois 60018. Defendant Dentsply also owns

and operates SICAT GMBH & CO. KG, located at Brunnenallee 6, 53177 Bonn, Germany.

NATURE OF THE ACTION

3. This is a civil action against Defendant for the infringement of the United

States Design Patent No.: US D611, 153 (the 153 Patent) (attached hereto as Exhibit A)

arising under the laws of the United States set forth in Title 35 of the U.S. Code 101 et seq.

of the Patent Act and unfair competition under the Lanham Act, 15 U.S.C. 1125(a).

JURISDICTION AND VENUE

4. The Court has original subject matter jurisdiction over this action pursuant to,

inter alia, 28 U.S.C. 1331 (federal question) and 1338(a) (action arising under the

Patent Act) and (b) (Unfair Competition joined with claims under the Patent Act).

5. This Court has personal jurisdiction over Defendant Dentsply as it has a

corporate manufacturing and distribution facility located within this judicial district and offers

for sale, sells and distributes infringing products within this judicial district.

6. Venue in the Northern District of Illinois is proper pursuant to 28 U.S.C.

1391 and 1400(b) at least because Defendant maintains a regular and established place of

business in this judicial district for, inter alia, manufacturing and distribution located at 901

W. Oakton St., Des Plaines, Illinois 60018 and has committed acts of infringement in this

judicial district.

STATEMENT OF FACTS

Background and the 153 Patent

7. Plaintiff Frantz is a well-known designer and inventor of various dental products


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and products for dental and sleep disorder treatment, including products well-known for use in

successful treatment of obstructive sleep apnea (OSA) which is thought to afflict over 40

million people in the United States.

8. Untreated, OSA is known to lead to, inter alia, heart problems, strokes and

excessive sleepiness.

9. Plaintiff Frantzs products for treatment of OSA are covered by patented design in

its 153 patent which was duly and legally issued by the United States Patent and Trademark

Office on March 2, 2010 and has remained in force since that time and continues to be in force.

10. Plaintiff Frantz is named as the assignee on the face of the 153 patent having

become owner of the patent through an assignment from the named inventors.

11. Plaintiff Frantzs OSA treatment products covered by the 153 patent are

manufactured by various leading dental labs, such as Glidewell Laboratories, 4141 MacArthur

Blvd., Newport Beach, California 92660; NOX Keller, 160 Larkin Williams Industrial Court,

Fenton, Missouri 63026; and many private dental offices throughout the United States under

stringent standards, FDA approval and specifications under the control of Myerson LLC

(Myerson), having corporate headquarters located at 5106 North Ravenswood, Chicago,

Illinois 60640-2713, and which are sold and distributed as the well-known Myerson EMA

Sleep Device (EMA device).

12. The EMA Device covered by the 153 patent incorporates major design

innovations including the regulation of the amount of advancement and freedom of mandibular

motion, with desired movement of the mandible forward into a desired position while allowing

the jaw to move in all positions and with such positioning of the mandible causing a forward

movement of the tongue and reopening of air flow through the oral pharynx.


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13. The Myerson EMA Device is extremely well-known in both its distinctive

ornamental design elements and successful treatment of OSA as now being recommended as

one of several oral appliances as a frontline of treatment for snoring and mild to moderate sleep

apnea, and in cases where apparatus for continuous positive airway pressure (CPAP) has not

been tolerated.

14. The FDA has approved the Myerson EMA Device for the treatment of both

obstructive sleep apnea and snoring and the EMA Device is made available for sale and

distribution throughout the United States to both authorized medical and dental professionals

and to authorized dental laboratories.

15. The patented design features of the 153 patent incorporated into the Myerson

EMA Device cover ornamental design for the dual strap movement detachably connected to

upper and lower mandible devices.

16. The Myerson EMA Device inclusive of the patented ornamental design covered

by the 153 patent has been commercially successful with its distinctive design features

providing differentiation to other competitors designs and being associated with Myerson

EMA Device as a distinctive and proprietary design.

17. As a result of Myersons substantial advertising, promotions, sales and

distribution efforts, as well as the high quality of the products and services, inclusive of FDA

approval, associated with the ornamental design features of the 153 patent, such ornamental

design has earned valuable and residual goodwill and reputation for plaintiff Frantz as being the

sole source for such goods and services in the United States.


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Defendant Dentsplys Infringement

And Other Wrongful Conduct

18. In recognition of the commercial success of the ornamental design of the 153

patent and Myerson EMA Devices, Dentsply began manufacturing, advertising, offering for

sale, selling and distributing a movable mandibular device incorporating, without authorization,

the ornamental design features of the 153 patent and infringing the 153 patent in competition

with Frantz and Myerson and other distributors and sellers of this design protected by the 153

patent, which infringing products are designated SICAT Air OptiSleep or Optisleep

(Optisleep) appliances and are imported, advertised, offered for sale, sold and distributed by

SICAT GmbH & Co. KG, Brunnenallee 6, 53177, Bonn, Germany, A Dentsply Sirona

Company, and wholly owned by Defendant Dentsply (see attached Declaration of John P.

Luther, Exhibit B, SICAT Air website, www.sicat.com).

19. Dentsply copied the Optisleep design from the ornamental design of the 153

patent embodied in the Myerson EMA Device design, and upon information and belief may

be characterized as a knockoff of the claimed ornamental design of the 153 patent

incorporated into the Myerson EMA Device.

20. The ornamental design of the Optisleep appliance is the same or substantially the

same as the ornamental design of the 153 patent and the Myerson EMA Device. The designs

are so similar as to be nearly identical such that an ordinary observer, giving such attention as a

purchaser usually gives, such as medical and dental supply entities, dental offices and patients,

would be so deceived by the substantial similarity between the designs so as to be induced to

purchase Dentsply Optisleep products believing them to be the same or substantially the same

as the design protected by the 153 patent.


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21. Dentsply intentionally copied the Optisleep design from the ornamental design of

the 153 patented design and exemplary specimens of the Optisleep and Myerson EMA

Device alongside the ornamental design claimed in the 153 patent are shown below, the

photograph of the exemplary Optisleep design being taken from the Dentsply Sirona SICAT

AIR website, www.sicat.com, SICAT AIR Brochure (Exhibit B, Declaration of John P. Luther).

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22. As shown in the pictures, the Dentsply OptiSleep appliance/product has a design

that is the same or substantially the same as the 153 patent. The designs are so similar as to be

essentially identical or nearly identical such that an ordinary observer, giving such attention as a

purchaser usually give, would be so deceived by the substantial similarity between the designs

so as to be induced to purchase OptiSupply products believing them to be the same or

substantially the same as the Myerson EMA products incorporating the design protected by

the 153 patent.

23. Frantz has not granted a license or any other authorization to Dentsply to make

use, offer for sale, sell or import any products that embody the design patented in the 153

patent and which is proprietary to Frantz, particularly in relation to the Myerson EMA

Devices.

24. In spite of the rights of Frantz, Dentsply willfully and knowingly infringed

Frantzs rights, including as to the 153 patent. Further, Dentsply committed wrongful acts that

constitute unfair and deceptive trade practices in relation to the OptiSleep design of Dentsply

products and services.

25. Frantz has been damaged by the foregoing infringing and wrongful acts of

Dentsply, including, without limitation, suffering actual damages.

26. By manufacturing and selling the OptiSleep design that is the same as or

substantially similar to the design protected by the 153 patent Dentsply willfully and

knowingly caused a likelihood of confusion or misunderstanding as to, inter alia, the

sponsorship and approval of the OptiSleep products and services being offered and sold by

Dentsply. Such wrongful conduct also caused a likelihood of confusion or misunderstanding as


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to the affiliation, connection or association of the Dentsply products and services with the

design protected by the 153 patent.

27. Dentsply did nothing to discourage consumers from believing that the OptiSleep

products and services were sponsored, approved or sold in affiliation, connection or association

with Frantz despite knowing of Frantzs rights. Dentsplys wrongful actions and practices in

connection with the OptiSleep products and services were deceptive to consumers and others

including Frantz.

28. Upon information and belief Dentsplys unlawful manufacturing and selling of

the OptiSleep product was not discovered until less than one year from the filing of this

complaint.

29. Dentsplys wrongful conduct and infringing activities will continue unless

enjoined by this Court.

Damages

30. As a direct and proximate result of Defendants willful infringement of

Plaintiff Frantzs 153 patent, Plaintiff has been gravely and irreparably damaged.

31. Plaintiff has been deprived of profits Defendant has illicitly earned by depriving

Plaintiff of the first-to market advantage, willfully copying Frantz's invention knowing it was

patented, reproducing a non-authorized replica of the patented invention, and offering for sale,

selling and distributing infringing products nationwide.

32. Due to Defendants infringement and misappropriation of Plaintiff s patented

design, Defendant has maliciously and unfairly competed without authorization of Plaintiff s

suggested retail price of products covered by its 153 patent, making it virtually impossible for

Plaintiff to recoup its expenses incurred in the development, manufacture in the United States,


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and sale and distribution of its products covered by its 153 patent over Defendants

unauthorized products.

33. Plaintiff has also been damaged in terms of royalties it would have received

from Defendant Dentsply had Dentsply sold Plaintiffs products, as opposed to misappropriating

a n d i n f r i n g i n g Plaintiff s protected 153 patent design to create an unauthorized replica.

34. Because of the extent of the imitation and infringement of the patented design

by Defendant, including the 153 patent design features such as the shape and the design as a

whole, upon information and belief consumers have expressed product confusion and have

drawn a false association between Plaintiff s protected patented design and Defendants

unauthorized products incorporating the patented design, thereby damaging Plaintiff s

reputation.

35. In fact, one key feature of Plaintiffs products is that such are manufactured in

compliance with FDA standards, under Plaintiff and Myersons stringent quality control and

specifications, and shipped and distributed in Myersons designated packaging to authorized

laboratories and dental offices, whereas due to the consumer confusion created by Defendants

willful infringement, it is likely that consumers may be misconceived into believing that

Plaintiff s products incorporating its patented design are not being manufactured in compliance

with FDA standards and/or fall below Plaintiffs/Myersons quality control standards and

specifications.

36. Additionally, due to the Defendants wide-scale infringing activities, i t i s

l i k e l y t h a t consumers have developed a further misconception that the unauthorized

infringing products are the original products containing the unique design features Frantz

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invented and patented.

37. Plaintiffs damages are substantial and may be continuing as Defendant may be

continuing i t s i l l e g a l i n f r i n g i n g a n d w r o n g f u l c o n d u c t and have the capacity to

continue to illegally manufacture and sell the infringing products. Because of Defendants

expansion of sales of the infringing products including sales and distribution to numerous

dental offices and facilities across the U.S, there is a continuing threat of severe and irreparable

harm to Plaintiff.

COUNT I

Patent Infringement

38. Plaintiff incorporates herein its allegations set forth in Paragraphs 1 through 37

above.

39. The 153 Patent was duly and legally issued to Assignee Frantz Design Inc. by

the PTO. A true and correct copy of the 153 patent is attached hereto as Exhibit A.

40. All rights, title, and interest in and to the 153 patent are vested in the Plaintiff.

41. Upon information and belief, Defendant has infringed and continues to infringe,

literally or under the doctrine of equivalents, the claim of the 153 patent by: (i) making,

using, importing, selling, and offering for sale in Illinois and nationwide, unauthorized

infringing products which embody the subject matter claimed in the 153 Patent; (ii) inducing

others to infringe the 153 patent, and/or (iii) committing acts which constitute contributory

infringement.

42. Defendants infringing activities violate 35 U.S.C. 271.

43. Upon information and belief, Defendant was fully aware of the existence of the

153 patent and yet deliberately copied and continues to deliberately copy and misappropriate

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the subject matter claimed in the 153 patent. See e.g. Exhibit B. Upon information and

belief, Defendant has therefore knowingly and willfully infringed and contributed to the

infringement of the 153 patent and has induced others to infringe the 153 patent.

44. Defendants infringement has caused grave and irreparable injury to Plaintiff,

and as such Plaintiff is entitled to damages pursuant to 35 U.S.C. 284.

45. In addition, Plaintiff has no adequate remedy at law against Defendants

continuing acts of infringement. Defendants infringement of the 153 patent may continue

unless and until enjoined by this Court, causing Plaintiff severe irreparable harm.

46. Plaintiff is therefore entitled to an injunction under 35 U.S.C. 283 against

Defendant preliminarily and permanently enjoining and restraining Defendant from infringing

Plaintiff s 1 5 3 patent, and from making, manufacturing, developing, producing, supplying,

selling, distributing, importing, exporting, advertising, and offering for sale the unauthorized

infringing products or any other product which incorporates any of Plaintiffs designs

protected by the 153 patent.

47. This is an exceptional case that falls within the provisions of 35 U.S.C. 285,

and accordingly Plaintiff is entitled to an award of reasonable attorney's fees.

COUNT II

Unfair Competition under the Lanham Act

48. Plaintiff incorporates herein the allegations set forth in Paragraphs 1 through 47
above.

49. Defendant has misappropriated Plaintiffs patented designs and have sold and

may be continuing to sell the unauthorized infringing products in commerce nationwide,

deceiving consumers into believing that Defendant is the innovator of Frantzs design

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covered for the 153 patent.

50. The packaging and advertising associated with the unauthorized infringing

products states, for example, Optisleep, the most advanced oral appliance straight from the

dentist (see Exhibit C), which in view of Defendants blatant and intentional copying and

infringement of the 153 patent is a deceptive and untruthful statement likely to cause, and is

believed to have caused, confusion among consumers in the marketplace.

51. Defendants u n a u t h o r i z e d i n f r i n g e m e n t b y w a y o f t h e

O p t i s l e e p devices a n d c o n c o m i t a n t p r o m o t i o n a l a c t i v i t i e s a n d a d v e r t i s i n g

is likely to cause confusion, mistake, or to deceive as to the affiliation, connection, or

association between the Plaintiffs patented designs embodied in the 153 patent and the

unauthorized infringing products.

52. Defendants attempts to claim Frantzs innovations and sell unauthorized

infringing products, amount to unfair competition and misappropriation under The Lanham

Act, 15 U.S.C. 1125(a), which has caused serious injury to Plaintiff.

53. Due to the foregoing, Plaintiff is entitled to damages against Defendant

pursuant to 15 U.S.C. 1117(a), including without limitation Defendants profits from sales

of the unauthorized infringing products, any damages sustained by Plaintiff, treble damages,

Plaintiffs costs and attorney's fees in connection with this action.

54. Plaintiff is also entitled to an injunction under 15 U.S.C. 1116 to prevent

Defendants further violations of 15 U.S.C. 1125(a).

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PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully demands the entry of judgment against the

Defendant as follows:

A. An Order declaring that Defendant has infringed and/or induced or contributed

to the infringement of U.S. Patent No.: D611,153; and

B. A permanent and preliminary injunction against Defendant enjoining and

restraining Defendant from infringing Plaintiffs 153patent, and from making,

manufacturing, developing, producing, supplying, selling, distributing, importing, exporting,

advertising, using, and offering for sale any product which incorporates any of Plaintiffs

designs protected by the 153 patent, including without limitation the unauthorized infringing

products; and/or

C. An award of damages against Defendant adequate to compensate Plaintiff for

Defendants infringement of the 153 patent pursuant to 35 U.S.C. 284 and treble damages

pursuant to 35 U.S.C. 284; and/or

D. Disgorgement of all profits made by Defendant from sales of the unauthorized

infringing products; and/or

E. An award of damages to Plaintiff in an amount determined at trial for

Defendants unfair competition under the Lanham Act and treble damages pursuant to 15

U.S.C. 1117(a)(3); and/or

F. An award of damages to Plaintiff in an amount determined at trial for

Defendants' misappropriation; and

G. Punitive damages against Defendant.

H. A declaration that this case is exceptional pursuant to 35 U.S.C. 285; and

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I. An award of all costs, expenses, disbursements, and attorney's fees incurred by

the Plaintiff in this action; and

J. An award of Plaintiff s pre-judgment and post-judgment interest; and/or

K. An award of any other or further relief as the Court deems just and proper.

DEMAND FOR JURY TRIAL

Plaintiff Frantz demands a trial by Jury in the above-captioned action pursuant to Fed. R.

Civ. P. 38 on all issues triable by Jury.

Respectfully submitted,

By: /s/ John P. Luther

John P. Luther
One of Plaintiffs attorneys
John P. Luther
Ladas & Parry LLP
224 South Michigan Avenue, Suite 1600
Chicago, Illinois 60604
Phone: (312) 427-1300
Fax: (312) 427-6663
Email: JLuther@ladas.net

Burton S. Ehrlich
Ladas & Parry LLP
224 South Michigan Avenue, Suite 1600
Chicago, Illinois 60604
Phone: (312) 427-1300
Fax: (312) 427-6663
Email: burte@ladas.net

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