united states district court southern district of … · 2019. 12. 2. · pressure airfryer and...

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

SHARKNINJA OPERATING LLC,

Plaintiff,

v.

EMERIL LAGASSE,

Defendant.

TRISTAR PRODUCTS, INC.,

Defendant/Counterclaim Plaintiff

v.

SHARKNINJA OPERATING LLC

DANIEL R. GIBSON, ESQ.

CANTOR COLBURN LLP

PEDRO J. LOPEZ-BALDRICH, ESQ.

Counterclaim Defendants

Civil Action No. 19-cv-24114

JURY TRIAL DEMANDED

DEFENDANT TRISTAR PRODUCT INC.’S ANSWER TO PLAINTIFF’S COMPLAINT

AND COUNTERCLAIMS

Defendant Tristar Products, Inc. (“Tristar”) hereby joins Daniel R. Gibson, the Law Firm

of Cantor Colburn LLP and Pedro J. Lopez-Baldrich as Counterclaim Defendants pursuant to

Fed. R. Civ. P. 20(a)(2) and responds to the Complaint (Dkt. 1) filed by Plaintiff SharkNinja

Operating LLC (“SharkNinja”) as follows:

Case 1:19-cv-24114-KMW Document 25 Entered on FLSD Docket 11/29/2019 of 36

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FACTUAL BACKGROUND

1. On information and belief, SharkNinja, its Prosecuting Attorney Daniel R.

Gibson, the law firm of Cantor Colburn LLP and SharkNinja’s Chief Legal Officer, Pedro J.

Lopez-Baldrich, knowingly participated in a scheme to tortiously interfere with Tristar’s

business by fraudulently obtaining and enforcing invalid patents for the purpose of limiting

competition and removing Tristar from the market.

2. SharkNinja also intentionally committed fraud by claiming to invent a combined

pressure cooker and air fryer when others had created a multifunction cooking device long before

SharkNinja.

3. The pressure cookers and air fryers distributed by Tristar lead the marketplace in

ongoing innovation, while SharkNinja is a late entrant falsely claiming to be inventors. Tristar

introduced a pressure cooker in 2002 and has sold millions of units since its introduction. Tristar

also introduced an air fryer in 2012 which has also sold millions of units since its introduction.

Using one pot with two separate lids relying on existing pressure cooker technology and existing

air fryer technology was not novel on the effective filing date of SharkNinja’s patent

applications.

4. Multi-function pots that simply involve substituting one type of cooking lid for

another were well known in the prior art. In June of 2016, a Chinese utility patent application

was filed by Zhejiang Shangchu Cookware Company that detailed a combination cooker that

used one pot and one lid for pressure cooking and another lid for air frying. This patent issued at

Chinese Patent No. CN 206119969 (“the CN ‘969 patent”). Zhejiang Shangchu is independent

of SharkNinja.


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5. Zhejiang Shangchu also filed a related invention patent application on the same

day as the ’696 patent, publication No. CN105902144 (“the CN ‘144 publication”), also

disclosing a combination cooker that used one pot and one lid for pressure cooking and another

lid for air frying. Unlike a utility application that is not substantively reviewed, the Chinese

Patent Office reviewed and denied this patent application based on prior art, concluding that a

combined pressure cooker and air fryer was not inventive even in June of 2016.

6. SharkNinja was aware of this prior invention by Zhejiang Shangchu. Zhejiang

Shangchu displayed a prototype of this combination air fryer and pressure cooker at the Import

and Export Fair in Canton, China in April 2018.

7. On information and belief, this prototype was shown and offered for sale at the

fair to CD Investments, a private equity company based in Beijing, China, that had earlier

acquired a significant equity interest in SharkNinja in August of 2017. On information and

belief, this prototype was also offered for sale at the fair to a U.S. importer for distribution in the

U.S.

8. The accused product, the Emeril Lagasse Pressure AirFryer, is covered by CN

Patent 209610822, an application filed in December 2018 by Tristar’s supplier, Zhongshan

Yalesi Electric Industrial Company.

9. The Emeril Lagasse Pressure AirFryer was publicly displayed and offered for sale

at the Chicago Housewares Show from March 10th to 13th, 2019 to retailers including Walmart,

Amazon, QVC, Bed Bath & Beyond, and Target.

10. On March 18, 2019, approximately one week after the public display of Tristar’s

Emeril Lagasse Pressure AirFryer, SharkNinja filed the applications that led to the asserted

patents (U.S. Patent Nos. 10,390,656; 10,413,121 and 10,413,122).


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11. Each of the asserted patents claim priority as a continuation application to U.S.

Application No. 16/059,876. However, each of the asserted patents add new disclosures in their

specifications that were not present in the parent application.

12. The new disclosure added in each asserted patent is different and directly supports

the new scope of elements claimed in each respective patent—a practice plainly aimed at

providing written description support for these claims that would otherwise be lacking.

13. SharkNinja and its prosecuting attorney(s), including at least Daniel R. Gibson of

Cantor Colburn LLP (Reg. No. 56,539), knew that new matter had been added to each of the

asserted patents, yet intentionally mischaracterized these patents as continuations when filed with

the United Stated Patent and Trademark Office (“USPTO”).

14. These fraudulent acts were done with the intent to improperly claim priority to an

earlier filed application so that SharkNinja could accuse the Emeril Lagasse Pressure AirFryer of

infringement, despite the accused device having been displayed and offered for sale before the

asserted patents were filed. Based on this addition of new matter, the accused Emeril Lagasse

Pressure AirFryer and SharkNinja’s own Foodi product are invalidating prior art to the asserted

patents.

15. In addition, on information and belief, during the prosecution of the asserted

patents, SharkNinja and its’s prosecuting attorney(s), including at least Daniel R. Gibson of

Cantor Colburn LLP, filed disclosures of more than 1,300 prior art references with the USPTO

without analyzing each of the submitted references for relevance.

16. Upon information and belief, this blizzard of prior art was intentionally filed by

SharkNinja and its prosecuting attorney(s) in order to hide relevant refences, such as the CN ‘969


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patent and CN ‘144 publication, a practice that Courts in this District and elsewhere have found

to be further evidence of inequitable conduct and fraud at the Patent Office.

17. SharkNinja and its attorney(s) including at least Daniel R. Gibson of Cantor

Colburn LLP have filed approximately 20 more continuation applications covering the same

combined pressure cooker and air fryer product. Like the asserted patents, these continuations

also falsely claim priority to application no. 16/059,876, despite new matter being provided in

the specifications, and also cite more than 1,300 prior art references providing further evidence

of an ongoing intent to commit an active fraud on the Patent Office by obtaining future invalid

patents.

18. Tristar has advantageous business relations with a large number of retailers that

carry and sell Tristar products, including the accused Emeril Lagasse Pressure Air Fryer.

19. Once the Complaint in this litigation was filed, SharkNinja and its in-house legal

counsel, including at least Pedro J. Lopez-Baldrich, wrote letters to several retailers that were

selling or planning to sell the Emeril Lagasse Pressure AirFryer alerting the retailer of the

fraudulently obtained patents and present litigation based on these patents.

20. As a result of the inequitable and fraudulent acts conducted by SharkNinja, its

prosecuting attorneys, including at least Daniel R. Gibson and the firm of Cantor Colburn, and

SharkNinja’s Chief Legal Officer Pedro J. Lopez-Baldrich, at least one retailer has refrained

from carrying the accused product and Tristar has suffered a loss of good will with many other

retailers.

21. Evidence of SharkNinja’s bad acts is further supported by its baseless suit naming

Emeril Lagasse as a defendant. Emeril Lagasse is a justly famous chef whose role has been to

use and endorse the accused product in an infomercial created in February 2019. He also


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appeared at the Housewares Show in March 2019 where he demonstrated the accused unit and

other products. On information and belief, SharkNinja knew or should have known that the

infomercial in which Emeril Lagasse appears was created before March 18, 2019. On

information and belief, SharkNinja knowingly (or recklessly) and falsely accused Emeril Lagasse

of patent infringement based on his actions that occurred before SharkNinja had even filed the

patent applications asserted in this lawsuit. Furthermore, SharkNinja asserted in its complaint

that Emeril Lagasse is a resident of the Southern District of Florida and has a restaurant in this

district. SharkNinja’s assertions are knowingly false as evidenced by SharkNinja’s harassing

service of the complaint outside this district in Emeril Lagasse’s restaurant in Miramar Beach,

near Fort Walton (publicly and during normal business hours).

22. Even if the asserted patents were valid and could claim priority prior to the release

of the Emeril Lagasse Pressure Air Fryer, the accused product does not infringe these patents at

least because it does not include a hinged lid that is movable relative to the housing as claimed

and exclusively disclosed in the asserted patents.

ANSWER

1. Tristar admits that SharkNinja filed a Complaint that contains allegations of

patent infringement against Tristar. Tristar denies these allegations.

NATURE OF ACTION

2. Tristar admits that the Complaint purports to allege claims of patent infringement

in violation of United States laws 35 U.S.C. § 271 and 281-285. Tristar denies it has infringed.

3. Tristar is without sufficient information to admit or deny the allegations of

paragraph 3, and on that basis, Tristar denies all allegations therein.


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4. Tristar admits it is a corporation organized and existing under the laws of Florida.

Tristar denies the remaining allegations of paragraph 4.

5. Tristar admits the allegations of paragraph 5.



JURISDICTION AND VENUE


8. Tristar admits that this Court has personal jurisdiction over Tristar and that Tristar

conducts business in this District and distributes products within the State of Florida. Tristar

denies committing any acts of infringement. Tristar is without sufficient information to admit or

deny the allegations of paragraph 8 pertaining to Mr. Lagasse, and on that basis, Tristar denies

those allegations.

9. Tristar denies the allegations of paragraph 9.

10. Tristar denies the allegations of paragraph 10 with respect to Tristar. Tristar is

without sufficient information to admit or deny the allegations of paragraph 10 pertaining to Mr.

Lagasse, and on that basis, Tristar denies those allegations.

11. Tristar admits that it has sold or offered the Emeril Lagasse Pressure AirFryer for

sale in this District. Tristar denies the remaining allegations of paragraph 11 with respect to

Tristar. Tristar is without sufficient information to admit or deny the allegations of paragraph 11

pertaining to Mr. Lagasse, and on that basis, Tristar denies those allegations.

PLAINTIFF SHARKNINJA




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THE NINJA FOODI




















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DEFENDANTS’ INFRINGING PRODUCT


25. Tristar admits that it sells the Emeril Lagasse Pressure AirFryer and uses the

slogan “the pressure cooker that air fries.” Tristar denies that it is an infringing product.

26. Tristar admits that it introduced the Emeril Lagasse Pressure AirFryer to market

approximately one year after Plaintiff alleges the Foodi was released. Tristar denies the

remaining allegations of paragraph 26.

27. Tristar denies that the Emeril Lagasse Pressure AirFryer is an infringing product,

but otherwise admits the allegations of paragraph 27.

28. Tristar admits that it has contracted with Mr. Lagasse to appear in a recorded

infomercial endorsing and using the Emeril Lagasse Pressure AirFryer, to use Mr. Lagasse’s

name in the name of the product, to use Mr. Lagasse’s name and likeness in advertising

materials, advertisements, packaging and in-store displays. Tristar denies the remaining

allegations of paragraph 26.



30. Tristar denies the allegations in paragraph 30.


32. Tristar admits that it uses the slogan “the pressure cooker that air fries” in

advertisements, infomercials and retail displays for the Emeril Lagasse Pressure AirFryer.

Tristar denies the remaining allegations of paragraph 32.




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SHARKNINJA’S ASSERTED PATENTS


36. Tristar admits that the ‘656 patent is entitled “Cooking Device and Components

Thereof” and appears to have issued on August 27, 2019. Tristar is without sufficient

information to admit or deny the remaining allegations of paragraph 36, and on that basis, Tristar

denies those allegations.

37. Tristar admits that a copy of the ’656 patent appears to be attached as Exhibit 1.

Tristar denies that each and every claim of the ‘656 patent is valid and enforceable. Tristar is

without sufficient information to admit or deny the remaining allegations of paragraph 37, and

on that basis, denies those allegations.


Thereof” and appears to have issued on September 17, 2019. Tristar is without sufficient








Thereof” and appears to have issued on September 17, 2019. Tristar is without sufficient




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COUNT ONE: INFRINGEMENT OF U.S. PATENT NO. 10,390,656

42. Tristar realleges and incorporates by reference its answers to paragraphs 1-41 of

the Complaint as set forth above.




44. The allegations in Paragraph 44 state a legal conclusion, to which no response is

required. To the extent a response is required, Tristar denies the allegations in Paragraph 44.












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52. Tristar admits that it gained knowledge of the ‘656 patent through the filing of the

Complaint. Tristar denies the remaining allegations of paragraph 52 with respect to Tristar.

Tristar is without sufficient information to admit or deny the allegations of paragraph 52



54. Tristar admits that Mr. Lagasse appears on a nationally-televised infomercial, in

online advertisements and in retail stores. Tristar is without sufficient information to admit or


those allegations.


Complaint. Tristar denies the remaining allegations of paragraph 55.





COUNT TWO: INFRINGEMENT OF U.S. PATENT NO. 10,413,121




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those allegations.







COUNT THREE: INFRINGEMENT OF U.S. PATENT NO. 10,413,122















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those allegations.







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DEMAND FOR JURY TRIAL

94. Tristar admits that SharkNinja demands a jury trial.

PRAYER FOR RELIEF

95. Tristar denies that SharkNinja is entitled to any of the relief sought in its request

or any relief whatsoever.

AFFIRMATIVE DEFENSES

96. Tristar pleads the following as affirmative and other defenses to the Complaint.

In asserting such defenses, Tristar does not concede that it bears the burden of proof as to any of

them. Discovery has yet to begin, and therefore Tristar reserves the right to amend, modify or

expand these defenses, including but not limited to those defenses revealed during discovery.

FIRST AFFIRMATIVE DEFENSE: NONINFRINGEMENT

97. Tristar repeats and re-alleges the allegations of the preceding Paragraphs as well

as those of its Counterclaims as if set forth fully herein.

98. Tristar has not infringed, and does not currently infringe the asserted patents,

willfully, or otherwise, either literally or by application of the doctrine of equivalents.

SECOND AFFIRMATIVE DEFENSE: INVALIDITY



100. The claims of the asserted patents are invalid because they fail to satisfy one or

more of the requirements of patentability specified in 35 U.S.C. § 1, et seq., including but not

limited to, 35 U.S.C. §§ 102, 103 and 112.


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THIRD AFFIRMATIVE DEFENSE: LIMITATIONS OF DAMAGES



102. SharkNinja’s claims for relief are barred, at least in part, by one or more of 35

U.S.C. §§ 286 and 287.

FOURTH AFFIRMATIVE DEFENSE: ADEQUATE REMEDY AT LAW



104. SharkNinja is not entitled to any injunctive relief because any alleged injury to

SharkNinja is not immediate or irreparable, and SharkNinja has an adequate remedy at law.

FIFTH AFFIRMATIVE DEFENSE: FAILURE TO STATE A CLAIM FOR WILLFUL

INFRINGEMENT



106. SharkNinja fails to state a claim against Tristar for willful infringement upon

which relief can be granted.

SIXTH AFFIRMATIVE DEFENSE: FAILURE TO STATE A CLAIM FOR INDIRECT

INFRINGEMENT



108. SharkNinja fails to state a claim against Tristar for contributory or induced

infringement upon which relief can be granted.


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SEVENTH AFFIRMATIVE DEFENSE: UNENFORCEABILITY



110. The asserted patents are unenforceable due to inequitable conduct before the

Patent Office by SharkNinja and its attorney(s) during prosecution of the applications that led to

the asserted patents. The details of the inequitable conduct performed by SharkNinja and its

Attorney(s), including at least Daniel R. Gibson, is set forth in Paragraphs 12-73 of Tristar’s

Counterclaims, below, and is adopted by reference, repeated, and re-alleged as though set forth

fully herein.

EIGHTH AFFIRMATIVE DEFENSE: PATENT MISUSE



112. SharkNinja is barred from asserting the asserted patents against Tristar based on

the doctrine of patent misuse, because SharkNinja engaged in acts designed to impermissibly

broaden the scope of its patent rights and did so with anti-competitive effect.

COUNTERCLAIMS

Pursuant to Federal Rule of Civil Procedure 13, Defendant and Counter-Plaintiff

Tristar alleges the following against Counterclaim Defendants:

THE PARTIES

1. Tristar is a corporation organized under the laws of the State of Florida with its

principal place of business in Fairfield, NJ.

2. SharkNinja has averred that it is a corporation organized under the laws of the

Delaware with its principal place of business in Needham, Massachusetts.


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3. On information and belief, the Law Firm of Cantor Colburn LLP, is located in

Hartford Connecticut.

4. On information and belief, Daniel R. Gibson is a Partner at the Law Firm of

Cantor Colburn LLP, located in Hartford Connecticut.

5. On information and belief, Pedro J. Lopez-Baldrich is the Chief Legal Officer for

SharkNinja, located in Needham, Massachusetts.

JURISDICTION AND VENUE

6. This Court has jurisdiction over the subject matter of these Counterclaims under,

without limitation, 28 U.S.C. §§ 1331, 1367, 1338(a), 2201, and 2202.

7. Venue is proper in this District pursuant to 28 U.S.C. § 1391.

8. SharkNinja has subjected itself to personal jurisdiction and has consented to

venue in this Court because it has sued Tristar in this Court.

9. On information and belief, Counterclaim Defendants Daniel R. Gibson, the law

firm of Cantor Colburn LLP and Pedro J. Lopez-Baldrich all knowingly participated in a scheme

aimed at intentionally and tortiously interfering with Tristar’s business that culminated with the

filing of a lawsuit in this District and that caused harm to Tristar in this District directly related to

this lawsuit, including directly sending letters to Tristar’s customers in an attempt to interfere

with and harm Tristar’s business.

10. On information and belief, the law firm of Cantor Colburn also regularly does

business in the State of Florida and in this District.

ACTUAL CONTROVERSY

11. According to the Complaint, SharkNinja claims to be the assignee and owner of

all rights, title to, and interest in the asserted patents.


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SHARKNINJA’S FRAUD AND INEQUITABLE CONDUCT

BEFORE THE PATENT OFFICE

12. On August 9, 2017, SharkNinja filed U.S. Provisional Application No.

62/543,082 with the Patent Office.

13. On August 9, 2018, SharkNinja filed U.S. Application No. 16/059,876 allegedly

claiming priority to U.S. Provisional Application No. 62/543,082.

14. On March 18, 2019, SharkNinja filed the application that led to the ’656 patent,

which later issued on August 27, 2019, allegedly claiming priority to U.S. Application No.

16/059,876.


which later issued on September 17, 2019, allegedly claiming priority to U.S. Application No.

16/059,876.


which later issued on September 17, 2019, allegedly claiming priority to U.S. Application No.

16/059,876.

17. Title 37 of the Code of Federal Regulations (“C.F.R.”) § 1.56 imposes a duty of

candor and good faith on each individual associated with the filing and prosecution of a patent

application before the USPTO.

18. This duty requires applicants and their prosecuting agents and attorneys to

disclose to the USPTO all information that is material to the patentability of the application

being examined.

19. Failing to disclose material information, or making materially false

misrepresentations to the USPTO, with an intent to deceive, constitutes inequitable conduct.

Such inequitable conduct renders the affected patents unenforceable.


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20. A cooking device that combines a pressure cooker and an air fryer was known in

March of 2019 when SharkNinja first filed the applications that led to the asserted patents.

21. A combined pressure cooker and air fryer was also known on August 9, 2017

when SharkNinja filed its provisional application (62/543,082) from which the asserted patents

allegedly claim priority.

22. On information and belief, SharkNinja intentionally hid evidence of this prior art

during the prosecution of the asserted patents and their parent application.

23. A company named Zhejiang Shangchu Cookware Company based in China came

up with the idea to offer a product that combines pressure cooking and air frying capabilities at

least as early as June 30, 2016, as described in the CN ‘969 patent and the CN ‘144 publication.

24. The CN ‘969 patent is a Chinese patent entitled “Multifunctional Pot” filed by

and assigned to Zhejiang Shangchu (attached as Exhibit A).

25. The CN ‘969 patent was filed on June 30, 2016 and issued on April 26, 2017.

26. Figures 1 and 10 disclosed in the CN ‘969 patent below, show a cooking device

having a pressure cooking lid, left, and an air frying lid, right.:

27. The CN ‘144 publication (attached as Exhibit B) has identical disclosures.


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28. Zhejiang Shangchu created a product that practices the CN ‘969 patent and CN

‘144 publication.

29. Zhejiang Shangchu put that product on public display in April of 2018 at the

Import and Export Fair in Canton, China.

30. In August of 2017, CDH Investments, based in Beijing, China, acquired a

significant equity interest in SharkNinja.

31. Upon Information and belief, employees of CDH attended the Canton Fair in

2018.

32. Upon Information and belief, employees of CDH observed Zhejiang Shangchu’s

combined pressure cooker and air frying product on display in 2018.

33. A prototype of a combined pressure cooker and air fryer, below, was disclosed in

SharkNinja’s Provisional Patent Application No. 62/543,082, filed on August 9, 2017.


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34. This provisional application fails to disclose many of the elements claimed in the

asserted patents, including at least the following elements:

- “a food container having a hollow container interior and being positionable

within said hollow chamber, wherein an end of said food container extends

above said upper portion of said housing when said container is installed

within said hollow chamber”

- “a second lid adapted to cover said opening to said hollow chamber and

including a locking feature for locking said second lid to said housing”

- “wherein in a first cooking mode of the plurality of cooking modes, said at

least one heating element in said first lid is open to airflow between said at

least one heating element and said hollow chamber, and in a second cooking


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mode of said plurality of cooking modes, said at least one heating element in

said first lid is closed off to airflow between said at least one heating element

and said hollow chamber by said second lid”

35. During SharkNinja’s prosecution of the asserted patents, SharkNinja and its

Attorney(s), including at least Daniel R. Gibson of Cantor Colburn LLP (Reg. No. 56,539),

committed multiple fraudulent and inequitable acts.

36. SharkNinja and its Prosecuting Attorney(s) intentionally misclaimed priority of

the asserted patents to the parent application.

37. Each of the asserted patents were filed as continuation applications at the USPTO.

38. A continuation application must not contain new matter in order to properly claim

priority to a parent application.

39. Here, each of the three asserted patents were filed as continuation applications

despite each disclosing new matter in the specification.

40. What’s more, the new matter added in each asserted patent is different, and in

each case, directly supports the claims filed in each respective patent.

41. Redline comparisons of excerpts from the specifications for the ‘656 patent, ‘121

patent and ‘122 patents compared to the parent application (Appl. No. 16/059,876) are attached

as Exhibits D-F, respectively.

42. Exhibits D-F show both the breadth of new material, as well as the disclosure of

and support for the precise claim limitations in each asserted patent.

43. For example, new matter was added in the ‘656 patent specification to cover the

newly claimed element of the food container “extend[ing] above the upper portion of the

housing,” an element absent from the parent application.


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44. In the ‘121 patent, new matter was added to cover the newly claimed “locking

mechanism,” an element absent from the parent application.

45. And in the ’122 patent, new mater was added to cover the newly claimed heating

element in the first lid being “open to airflow” from the chamber in the first cooking mode and

“closed off to airflow” in the second cooking mode, both of which were absent from the parent

application.

46. Upon information and belief, SharkNinja and its Attorney(s) including at least

Daniel R. Gibson of Cantor Colburn LLP intentionally added the new matter to have written

description support for the new claims in each asserted patent, but still filed these applications as

continuations.

47. By doing so, SharkNinja and its Attorney(s) acted with a concerted effort to

fraudulently claim earlier priority for the asserted patents than what is proper.

48. In addition, SharkNinja and its prosecuting attorney(s) intentionally hid reference

to the earlier invention, disclosure, and patenting of a combined pressure cooker and air fryer by

Zhejiang Shangchu.

49. More specifically, SharkNinja and its Attorney(s) submitted more than 1,300 prior

art references in Invention Disclosure Statements (“IDS”) filed with the USPTO during the

prosecution of the ‘656 patent.

50. The IDSs disclosing the 1,300+ references over 239 pages filed during

prosecution of the asserted ‘656 patent are attached as Exhibit C.

51. SharkNinja and its Attorney(s) buried the CN ‘969 patent and CN ‘144

publications with the 1,300+ other prior art references submitted.


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52. SharkNinja provided no explanation or description of these references to the

USPTO.

53. Upon information and belief, SharkNinja and its Attorney(s) never even reviewed

the 1,300+ references in full before submitting them to the USPTO.

54. Upon information and belief, this blizzard of prior art was intentionally filed by

SharkNinja and its prosecuting attorney(s) in order to hide relevant refences, such as the CN ‘969

patent and CN ‘144 publication, a practice that courts in this District and elsewhere have found

to be further evidence of inequitable conduct. See, e.g., Penn Yan Boats, Inc. v. Sea Lark Boats,

Inc., 359 F. Supp. 948, 175 U.S.P.Q. (BNA) 260 (S.D. Fla. 1972), aff'd, 479 F.2d 1328, 178

U.S.P.Q. (BNA) 577 (5th Cir.), cert. denied, 414 U.S. 874 (1973); eSpeed, Inc. v. Brokertec

USA, L.L.C., 417 F. Supp. 2d 580 (D. Del. 2006), aff'd, 480 F.3d 1129 (Fed. Cir. 2007); Rovi

Guides, Inc. v. Comcast Cable Communications, 2019-10-03 Appeal No. 2019-1188 Hearing

(Judge Alan D. Lourie criticizing plaintiff’s inclusion of 1,500 references during prosecution,

stating that there is no other reason to cite that many references “other than to bury the

examiner” asking plaintiff’s attorney to “filter back to the originators of this patent that, at least

with respect to one judge, it doesn't sit very well … It doesn't leave a good impression of the

prosecution.”).

55. It is impossible for an Examiner at the USPTO to review 1,300+ references during

the prosecution of a single patent application.

56. This fact is made apparent by the lack of the Examiner’s signature (symbolizing

consideration of the reference) for the vast majority of those submitted with the ’656 patent.

57. SharkNinja and its Attorney(s) knew that it would be impossible for the Patent

Examiner to review even a fraction of the 1,300+ references it submitted.


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58. Identical disclosures of 1,300+ references were made by SharkNinja during

prosecution of both the ‘121 and ‘122 patents.

59. The CN ’969 patent is shown on p. 87 of Exhibit C and CN ‘144 publication on p.

132 of Exhibit C with no Examiner signature.

60. The lack of the Examiner’s signature is proof that these references were never in

fact reviewed or considered by the Examiner before allowing the ‘656 patent to issue.

61. The CN ‘969 patent and CN ‘144 publication was also never reviewed or

considered by the Examiner during the prosecution of the ’121 and ‘122 patents.

62. SharkNinja and its attorney(s) including at least Daniel R. Gibson of Canton

Colburn LLP have also filed approximately 20 more continuation applications covering the same

combined pressure cooker and air fryer product.

63. Like the asserted patents, these continuations also falsely claim priority to

application no. 16/059,876, despite new matter in the specifications and also cite more than

1,300 references as prior art.

64. These actions by SharkNinja and its prosecuting attorney(s) provide further

evidence of an ongoing intent to commit an active fraud on the Patent Office by obtaining future

invalid patents.

65. The timing of the actions taken by SharkNinja and its Attorney(s) is also telling of

their misdeeds.

66. The infomercial in which Tristar’s Emeril Lagasse Pressure AirFryer first

appeared was filmed on February 11, 2019.

67. Tristar’s Emeril Lagasse Pressure AirFryer was first publicly displayed at the

International Home + Housewares Show in Chicago from March 10 to 13, 2019.


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68. SharkNinja filed the applications that later became the asserted patents on March

18, 2019, less than one week after the public disclosure of the Emeril Lagasse Pressure AirFryer.

69. In the applications that became the asserted patents, SharkNinja intentionally

added new matter to each of the specifications.

70. The new matter in these specifications support the patent claims in these patents

that were drafted to cover the Emeril Lagasse Pressure AirFryer, which had recently been

publicly disclosed.

71. SharkNinja and its attorney(s), including at least Daniel R. Gibson of Canton

Colburn LLP, lied about the priority of these applications to the Patent Office in an effort to

predate Tristar’s development, release, and sale of the accused device.

72. It is only because of these fraudulent acts that the asserted patents issued and the

present lawsuit initiated.

73. Evidence of SharkNinja’s bad acts is further supported by its baseless suit naming

Emeril Lagasse as a defendant. Mr. Lagasse is merely a paid spokesman for the accused product

who cannot plausibly be involved in any aspect of the alleged infringement. SharkNinja knew

that Mr. Lagasse’s involvement pre-dated the issuance of the patents, knew that he has no

responsibility for the sale or distribution of the accused product, and knew that he was an

individual for whom venue is improper, yet named him as a defendant for no other reason than to

embarrass and harass him.

INTERFERENCE WITH TRISTAR’S BUSINESS RELATIONS

74. Tristar has advantageous business relations with a large number of retailers that

carry and sell Tristar products, including the accused Emeril Lagasse Pressure Air Fryer.


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75. These retailers include Bed Bath and Beyond, QVC, Costco, Kohls, Walmart,

Sam’s Club, Target and many others.

76. This lawsuit alleges patent infringement of three patents that, based on

information and belief, were fraudulently obtained through intentional acts taken by SharkNinja,

its Prosecuting Attorney Daniel R. Gibson and the Law Firm of Cantor Colburn LLP.

77. Once the Complaint was filed, SharkNinja and its in-house legal counsel,

including at least Pedro J. Lopez-Baldrich, wrote letters to several retailers who were selling or

planning to sell the Emeril Lagasse Pressure Air Fryer.

78. These letters (examples of which are attached as Exhibits G and H) alerted the

retailers of the fraudulently obtained patents and present litigation based on these patents.

79. These letters also misrepresented that the accused product infringes the

fraudulently obtained asserted patents, that the supply of Tristar’s product could be impacted by

the litigation, and asked that the retailer refrain from placing further orders for the Emeril

Lagasse Pressure AirFryer from Tristar.

80. As a result of the inequitable and fraudulent acts conducted by SharkNinja, its

prosecuting attorneys, including at least Daniel R. Gibson of the firm of Cantor Colburn, and

SharkNinja’s in-house counsel, including at least Pedro J. Lopez-Baldrich, caused at least one

retailer, QVC, to refrain from carrying the accused product and Tristar has suffered a loss of

good will with many other retailers.

COUNTERCLAIM ONE

(Declaratory Judgment of Unenforceability of the Asserted

‘656, ‘121 and ‘122 Patents Due to Inequitable Conduct)

81. Tristar repeats and re-alleges the allegations of the preceding Paragraphs of its

Affirmative Defenses and Counterclaims as if fully set forth herein.


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82. The asserted patents are unenforceable due to inequitable conduct before the

Patent Office by SharkNinja and its Attorney(s) during prosecution of the applications that led to

the asserted patents. The details of the inequitable conduct performed by SharkNinja and its

Attorney(s), including at least Daniel R. Gibson and the law firm of Canton Colburn LLP, is set

forth in the preceding paragraphs above, and is adopted by reference, repeated, and re-alleged as

though set forth fully herein.

83. A judicial determination of the respective rights of the parties with respect to the

unenforceability of the asserted patents is now necessary and appropriate under 28 U.S.C. § 2201

COUNTERCLAIM TWO

(Declaratory Judgment of Invalidity of the ’656 Patent)



85. The claims of the ’656 patent are invalid under 35 U.S.C. §§ 102 and/or 103 in

light of prior art. For example, one or more claims of the ’656 Patent are invalid due to the

following prior art: US 4,241,288 (Aoshima); US Publ. 2014/0227411 (Popeil); US 6,903,310

(Lee); US 6,083,543 (Kim); US Publ. 2005/0223906 (Xu); US 5,588,352 (Harrison352); US

publ. 2014/0199459 (Jackson); US 5,526,734 (Harrison734) and CN ‘969.

86. The claims of the ’656 patent are invalid under 35 U.S.C. § 112 for failing to

comply with one or more of the written description requirement, the enablement requirement,

and the definiteness requirement.


validity of the claims of the ’656 patent is now necessary and appropriate under 28 U.S.C. §

2201.


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COUNTERCLAIM THREE













invalidity of the claims of the ’121 patent is now necessary and appropriate under 28 U.S.C. §

2201.

COUNTERCLAIM FOUR










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invalidity of the claims of the ’122 patent is now necessary and appropriate under 28 U.S.C. §

2201.

COUNTERCLAIM FIVE

(Tortious Interference with Advantageous Business Relations)



97. With no legitimate justification, SharkNinja has intentionally and maliciously

interfered with Tristar’s business relationships with a number of these retailers who sell, or were

planning to sell, the accused Emeril Lagasse Pressure Air Fryer. The details of the conduct

performed by SharkNinja and its Attorney(s) is set forth in the preceding paragraphs above, and

is adopted by reference, repeated, and re-alleged as though set forth fully herein.


intentional and tortious interference of Tristar’s business relations by SharkNinja, Daniel R.

Gibson, the law firm of Canton Colburn LLP and Pedro J. Lopez-Baldrich is now necessary and

appropriate under 28 U.S.C. § 2201.

COUNTERCLAIM SIX

(Declaratory Judgment of Non-Infringement of the ’656 Patent)




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100. SharkNinja alleges in the Complaint that Tristar infringes one or more claims of

the ‘656 patent.

101. Tristar is not infringing, has not infringed, and is not liable for any infringement,

of any valid claim of the ‘656 Patent, and SharkNinja is not entitled to any relief for any such

claim of infringement against Tristar.


infringement of the claims of the ’656 patent is now necessary and appropriate under 28 U.S.C. §

2201.

COUNTERCLAIM SEVEN





the ‘121 patent.






2201.

COUNTERCLAIM EIGHT





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the ‘122 patent.






2201.

DEMAND FOR JURY TRIAL

111. Pursuant to Federal Rule of Civil Procedure 38(b), Tristar respectfully requests a

trial on all issues properly triable to a jury.

PRAYER FOR RELIEF

WHEREFORE, Tristar respectfully request the following relief:

a. The Court enter judgment in favor of Tristar denying all relief requested by

SharkNinja in this action and dismissing SharkNinja’s Complaint with prejudice;

b. The Court declare and enter judgment that the asserted patents are unenforceable

because of inequitable conduct;

c. The Court declare and enter judgment that the asserted patents are invalid;

d. The Court declare and enter judgment that SharkNinja, its prosecuting attorney(s)

including at least Daniel R. Gibson, Cantor Colburn LLP and its in-house counsel

including at least Pedro J. Lopez-Baldrich tortiously interfered with Tristar’s

advantageous business relations;


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e. The Court direct that SharkNinja, Daniel R. Gibson, the law firm of Canton Colburn

LLP and/or Pedro J. Lopez-Baldrich pay Tristar for the damages that resulted from

said tortious interference;

f. The Court declare and enter judgment that Tristar does not infringe any claims of the

asserted patents;

g. The Court declare and enter judgment that this is an exceptional case under 35 U.S.C.

§ 285;

h. The Court direct that SharkNinja pay Tristar’s attorneys’ fees and costs incurred with

this civil action; and

i. The Court award such further relief as the Court deems just and proper.

Dated: November 29, 2019 Respectfully submitted,

/s/ Roger A. Colaizzi

Roger A. Colaizzi (admitted pro hac vice)

Frank C. Cimino, Jr. (admitted pro hac vice)

VENABLE LLP

600 Massachusetts Avenue, NW

Washington, DC 20001

202.344.4569

202.344.8300 – Facsimile

[email protected]

[email protected]

Robert E. Bugg (admitted pro hac vice)

VENABLE LLP

Rockefeller Center

1270 Avenue of the Americas

New York, NY 10020

212.370.6241

212.307.5598 – Facsimile

[email protected]

RUSSOMANNO & BORRELLO, P.A.

Museum Tower – PH2800


mailto:[email protected]






36

150 West Flagler Street

Miami, Florida 33130

Telephone: (305) 373-2101

By: /s/ Herman J. Russomanno III

Herman J. Russomanno III

Fla. Bar No. 21249

[email protected]

ATTORNEYS FOR DEFENDANT TRISTAR

PRODUCTS, INC.

CERTIFICATE OF SERVICE

I hereby certify that on November 29, 2019, I electronically filed the foregoing document

with the Clerk of Court using CM/ECF. I also certify that the foregoing document is being served

this day on any and all counsel of record or pro se parties in the manner specified, either via

transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized

manner for those counsel or parties who are not authorized to receive electronically Notices of

Electronic Filing.

/s/ Herman J. Russomanno III


united states district court southern district of … · 2019. 12. 2. · pressure airfryer and...

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