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Defendants.
COMPLAINT
Plaintiff United States Gypsum Company (“USG” or “Plaintiff”) hereby brings the present
action against Defendants Level 5 Tools, LLC and Asia Tech Source Co., Ltd. (together,
I. INTRODUCTION
1. This is an action for patent infringement of United States Design Patent Nos.
D565,383 and D541,616 (collectively, the “Patents-in-Suit) under the Patent Laws of the United
States, 35 U.S.C. § 1, et seq. The patented technology relates to contoured handles for taping
knives, which are used during the application of wallboard joint compound during the finishing of
interior walls. Plaintiff seeks to address Defendants’ infringement of its patented designs through
the manufacture, sale, importing, using and offering for sale of tools featuring Plaintiff’s patented
designs.
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2. This Court has original subject matter jurisdiction over the claims in this action
pursuant to provisions of the Patent Act, 35 U.S.C. § 1, et seq.; 28 U.S.C. § 1338; and 28 U.S.C.
§ 1331.
3. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400(b), and this
Court may properly exercise personal jurisdiction over Defendants because they reside in this
District, have regularly conducted business in this District, and/or have committed acts of patent
infringement in this District. Without limitation, on information and belief, Defendants, directly
and/or through intermediaries, have advertised, imported (or caused to be imported), offered to
sell, sold and/or distributed infringing products and/or has induced the sale and use of infringing
III. PARTIES
under the laws of the State of Delaware with its principal place of business at 550 West Adams
Street, Chicago, Illinois 60661. USG is a leading manufacturer and distributor of building
materials, including tools and gypsum products used to construct walls, ceilings, roofs and floors
of various types of buildings. USG conducts extensive research and development efforts to create
and commercialize new technology for its products, including the technology covered by the
Patents-in-Suit.
5. On information and belief, Defendant Level 5 Tools, LLC (“Level 5”) is a limited
liability company organized under the laws of Kansas, with its principal place of business at 728
6. On information and belief, Defendant Asia Tech Source Co., Ltd. (“Asia Tech”) is
a company with offices in Taiwan at 2F, #71, Lane 145, Tun Hua North Road, Taipei, Taiwan
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10549; China at Room 1503, Modern Plaza B, 8 Wei Ye Road, Kunshan City, Jiangsu, China
215300; the United States in Illinois at 1019 Childs Street, Wheaton, IL 60187; and a United States
Sales Office in Virginia at 17 Wilkes Street, Alexandria, Virginia 22314. Defendant Asia Tech’s
Chairman, Mr. Gerry Cooper resides in Alexandria, Virginia. On information and belief, the Sales
Director of Asia Tech is Roni Schmidt, who resides at 1117 Las Olas Avenue, Santa Barbara,
California 93101-2114.
7. On May 1, 2007, U.S. Patent No. D541,616 (the “‘616 Patent”), entitled
“Contoured Handle for Taping Knife” was duly and legally issued. A copy of the ‘616 Patent is
attached hereto as Exhibit A. The ‘616 Patent issued from U.S. patent application Serial Number
8. The inventors have assigned all right, title, and interest in the ‘616 Patent to USG,
and USG is the sole owner of all right, title and interest in and to the ‘616 Patent, including the
right to sue for disgorgement of Defendants’ profits from the sale of infringing products, and to
obtain injunctive or any other relief for infringement of the ‘616 Patent.
9. On April 1, 2008, U.S. Patent No. D565,383 (the “‘383 Patent”), entitled
“Contoured Handle for Taping Knife” was duly and legally issued. A copy of the ‘383 Patent is
attached hereto as Exhibit B. The ‘383 Patent issued from U.S. patent application Serial Number
29/289,782, filed August 1, 2007, which claims legal priority to the ‘616 Patent filed on July 22,
2005.
10. The inventors have assigned all right, title, and interest in the ‘383 Patent to USG,
and USG is the sole owner of all right, title and interest in and to the ‘383 Patent, including the
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right to sue for disgorgement of Defendants’ profits from the sale of infringing products, and to
obtain injunctive or any other relief for infringement of the ‘383 Patent.
11. The Patents-in-Suit cover fundamental designs developed by USG which feature
12. Defendant Level 5 operates both a fully interactive, commercial Internet website
located at level5tools.com, and a corporate headquarters at 728 Southwest Boulevard, Kansas City,
Kansas 66103.
13. Defendant Level 5 operates a drywall tool company that sells drywall finishing
tools, among other products. In that regard, Defendant Level 5 competes directly with USG and/or
licensees of USG.
distributing, selling, and/or offering for sale a variety of products for use in drywall finishing,
which bear source-identifying design elements that infringe the ‘616 and ‘383 Patents. The
infringing products include, without limitation: Premium Stainless Steel Hand Tool Set; Premium
Carbon Steel Hand Tool Set, Soft-Grip Professional Blue Steel Taping Knives, Soft-Grip
Professional Carbon Steel Putty/Finishing Knives, Soft-Grip Professional Stainless Steel Taping
15. A comparison of USG’s claim in the ‘616 Patent with an Infringing Product offered
for sale on level5tools.com exemplifies Defendant Level 5’s infringement of United States Design
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16. A comparison of USG’s claim in the ‘383 Patent with an Infringing Product offered
for sale on level5tools.com exemplifies Defendant Level 5’s infringement of United States Design
17. Defendant Asia Tech operates fully interactive Internet websites located at
selling, offering for sale and/or importing into the United States products that bear source-
identifying design elements that infringe the ‘616 and ‘383 Patents.
19. On information and belief, Asia Tech sold infringing products in Kansas to Level
5.
20. On January 20, 2018, Plaintiff provided written notice to Defendant Level 5 that it
is infringing the Patents-in-Suit via letter addressed to Level 5 Tools, LLC at 728 Southwest Blvd.,
Kansas City, Kansas 66103. A copy of the letter is attached hereto as Exhibit C. The letter
identified both Patents-in-Suit, and requested confirmation that Level 5 would immediately stop
21. On January 20, 2018, Plaintiff provided written notice to Defendant Asia Tech
Source that it is infringing the Patents-in-Suit via two letters – the first addressed to 17 Wilkes
Street, Alexandria, Virginia 22314, and the second addressed to 1019 Childs Street, Wheaton,
Illinois 60187. Copies of the letters are attached hereto as Exhibits D and E. The letters identified
both Patents-in-Suit, and requested confirmation that Asia Tech immediately discontinue
manufacturing, importing and selling the infringing products. Additionally, Plaintiff requested
Defendant Asia Tech cease using USG’s Sheetrock® trademark on its website.
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22. On June 26, 2018, Mr. Dan Cooper, President of Defendant Asia Tech, responded
to USG’s letter, arguing that it was not the “U.S. importer or seller” of the infringing products, and
acknowledging it removed the Sheetrock® trademark from its website. A copy of the letter is
23. On June 27, 2018, Plaintiff responded via e-mail to Mr. Cooper’s June 26, 2018
letter. A copy of the e-mail is attached hereto as Exhibit G. Plaintiff requested Defendant Asia
Tech to reconsider its position in light of potential future litigation. Plaintiff received no further
24. On July 13, 2018, counsel representing Defendant Level 5 responded to USG’s
letter, arguing that none of Level 5’s products infringed USG’s patents, and claiming that USG’s
patents were actually anticipated and/or obvious in view of prior art. A copy of the letter is attached
hereto as Exhibit G.
25. Defendants, without any authorization, license, or other permission from Plaintiff
USG, have used Plaintiff’s patented designs in connection with the making, using, offering to sell,
selling, or importing of the infringing products into the United States and Kansas over the Internet,
making, using, offering to sell, selling, or importing of infringing products, including the sale of
COUNT I
INFRINGEMENT OF UNITED STATES DESIGN PATENT NO. D541,616
(35 U.S.C. § 271)
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28. USG repeats and re-alleges the allegations set forth in paragraphs 1 through 27
29. Defendants make, use, sell, offer for sale, and/or import into the United States for
subsequent sale or use products that infringe directly and/or indirectly the ornamental design
30. Defendants have infringed the ‘616 Patent through the aforesaid acts, and will
continue to do so unless enjoined by this Court. Defendants’ wrongful conduct has caused USG
to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude others from
making, using, selling, offering for sale and importing the patented inventions. USG is entitled to
31. USG is entitled to recover damages adequate to compensate for the infringement,
COUNT II
INFRINGEMENT OF UNITED STATES DESIGN PATENT NO. D565,383
(35 U.S.C. § 271)
32. USG repeats and re-alleges the allegations set forth in paragraphs 1 through 31
33. Defendants make, use, sell, offer for sale, and/or import into the United States for
subsequent sale or use products that infringe directly and/or indirectly the ornamental design
34. Defendants have infringed the ‘383 Patent through the aforesaid acts, and will
continue to do so unless enjoined by this Court. Defendants’ wrongful conduct has caused USG
to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude others from
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making, using, selling, offering for sale and importing the patented inventions. USG is entitled
35. USG is entitled to recover damages adequate to compensate for the infringement,
WHEREFORE, Plaintiff prays that the Court enter an Order against Defendants as follows:
1) Defendants, their officers, agents, servants, employees, attorneys, confederates, and all persons
acting for, with, by, through, under, or in active concert with them be permanently enjoined
a. making, using, importing, offering for sale, or selling any products not authorized by
USG and that includes any reproduction, copy or colorable imitation of the design
b. making, using, importing, offering for sale, or selling any products not authorized by
USG and that includes any reproduction, copy or colorable imitation of the design
other device for the purpose of circumventing or otherwise avoiding the prohibitions
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2) Directing that Defendants deliver for destruction all products in their possession or under their
control bearing the patented designs of USG’s ‘616 and ‘383 Patents, and all plates, molds,
3) Awarding USG such damages as it shall prove at trial against Defendants that are adequate to
compensate USG for infringement of USG’s ‘616 and ‘383 Patents, and all of the profits
Defendants’ unauthorized use and infringement of USG’s ‘616 and ‘383 Patents.
4) A finding that this case is exceptional and an award to USG of its attorneys’ fees and costs as
5) Such other relief that this Court deems just and proper.
Pursuant to Federal Rule of Civil Procedure 38(b), United States Gypsum Company hereby
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Exhibit A
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Exhibit B
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Exhibit C
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Exhibit D
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Exhibit E
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Exhibit F
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Taipei Office
Kun
Asia Tech Source Co. Ltd
Dan Cooper
President
Pete Sahu
Senior Intellectual Property Counsel
USG Corporation
700 North US Highway 45
Libertyville, IL 60048
I am in receipt of your letter dated June 20, 2018. Please note that we aren’t the U.S. importer
or seller of the tools which you mentioned allegedly infringe on your patents. I would suggest
you follow up with the U.S. importer or seller of those tools in question.
In compliance with your request, we have removed the Sheetrock® trademark from our website
along with any other references to your trademark as we no longer supply products to your
company.
Regards,
Dan Cooper
President
Exhibit G
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From: Sahu, Pradip 'Pete'
Sent: Wednesday, June 27, 2018 3:43 PM
To: 'Dan Cooper' <dancooper@asiatechsource.com>
Subject: Patent Infringement Matter Involving Level 5 Tools Manufactured and Supplied by Asia Tech Source
Dear Mr. Cooper:
Thank you for your email and attached letter. We appreciate that you removed our trademark from your site, and we
otherwise understand your position in your carefully worded letter. We note that you do not deny that you are the
manufacturer and supplier of the infringing tools, and we note that you do not deny that your US company and US
personnel are complicit with Level 5 Tools in infringing our patent rights. We are prepared to take actions against
you. This includes actions against your US company and your US personnel in their individual capacities to the extent
that they are assisting in the infringement.
In addition, you should be aware that even though your manufacturing operations are in China, you and your China
company still can be held liable for patent infringement. Your attorneys in the US can help explain this to
you. Moreover, you have been notified of our US patent rights, so any continued willful infringement could subject your
companies and personnel to even further liability for the damage that our company is suffering. Finally, you should note
that our company also has patents in China that cover our tools. We urge you to consult with your patent attorneys in
China if you are continuing infringing activities there.
In any event, we ask that you reconsider your position after discussing with your attorneys and your client Level 5
Tools. We still hope that we can resolve this matter against your companies amicably so that you and your personnel do
not have to suffer as defendants. We ask that you respond by July 15th at the latest. Thank you again.
Sincerely,
USG Corporation
Corporate Innovation Center
700 North US Highway 45
Libertyville, Illinois 60048
e psahu@usg.com
t 847-970-5093
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Please see the attached letter in response to your letter to us dated June 20th.
Regards,
Dan Cooper
President
Asia Tech Source
Confidentiality Notice: This email is intended for the sole use of the intended
recipient(s) and may contain confidential, proprietary or privileged information.
If you are not the intended recipient, you are notified that any use, review,
dissemination, copying or action taken based on this message or its attachments,
if any, is prohibited. If you are not the intended recipient, please contact the
sender by reply email and destroy or delete all copies of the original message
and any attachments. Thank you.
Code:USG45ty
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Exhibit H
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Pete Sahu
United States Gypsum Company
700 North US Highway 45
Libertyville, Illinois 60048
Our firm represents Level 5 Tools, LLC (“Level 5”) for intellectual property matters. This
responds to your letter dated June 20, 2018. Based on the following, including the attached prior art
examples, none of Level 5’s products could reasonably be construed to infringe a valid claim of a USG
drywall hand tool patent.
Additionally, based on a preliminary prior art search, it appears the asserted USG patents (U.S.
D565,383 and U.S. D541,616) are vulnerable to challenge and may very well be invalid based upon
anticipation and/or obviousness considerations in view of the prior art. For example, pertinent prior art
references include, but are not limited to, U.S. Patent Nos. 6,742,215; 5,956,799; Re 31,436; 5,446,941;
6,530,098; and 5,615,445 (attached). Undoubtedly, a more thorough prior art search would result in
numerous other relevant prior art references because similar hand tool handles have been available for
many years. Even if the ‘383 and ‘616 patents were to remain enforceable, the designs protected by each
would be interpreted very narrowly because of the plethora of close prior art.
There are several key differences of Level 5 taping knife handles from the Sheetrock-branded
taping knife handles covered in the ‘383 and ‘616 patents. First, the hammer end of each Level 5 taping
knife handle has a beveled end, which is different from the completely flat hammer end in the ‘383 and
‘616 patents. It is a required, functional feature of drywall tool handle hammer ends to have some flat
surface so that the hammer end can be used to hammer. The beveled edges around the flat surfaces of the
Level 5 handles provides a substantially different ornamental feature from the Sheetrock handles.
Case 2:18-cv-02538 Document 1-8 Filed 10/09/18 Page 3 of 3
Pete Sahu
United States Gypsum Company
July 13, 2018
Page 2
Next, the blade connector portions of the Level 5 handles and the Sheetrock handles are different.
The base of the connector portion, closest to the blade end, of the Level 5 handles is curved, whereas the
base of the connector portion of the Sheetrock handles is straight across. The connector portion of the
Level 5 handles have a lesser inward angle than the connection portion of the Sheetrock handles.
The curvature of the handles are also different. Viewing from the top or bottom, the Sheetrock
handles curve or round inward more drastically as they approach the blade connector portion when
compared to the Level 5 handles. Best illustrated when viewed from the side, the Level 5 handles appear
to be thicker than the Sheetrock handles at the widest point of the handle and thinner than the Sheetrock
handles near the blade. Furthermore, the curvature of the handles is largely functional as it is an
ergonomic fit for a user’s hand.
Figs. 6-10 of the ‘616 patent are very different from the Level 5 handles and are very clearly not
infringed. These include a crescent-shaped hang hole and a curved design of the proximal end of the
handle hammer end. The Level 5 handles have a very different, diamond-shaped hang hole, and each
hammer end proximal end is straight across and intersects with the diamond-shaped hang hole.
Courts analyze design patents in the context of the prior art. In a field of products with largely
functional features and with as much prior art as contoured hand tool handles, the aforementioned
differences are extremely significant. Thus, the Level 5 handles and Sheetrock handles have substantially
different designs.
Responding to your allegation that Level 5’s tools “were intended to mimic [USG’s tools],” Level
5 did not mimic USG tools and has had no intention of mimicking USG tools. As discussed above, there
are a number of substantial differences in the designs of the Level 5 tool handles and the Sheetrock tool
handles. The use of “mimic” seems analogous to a trade dress or trademark assertion, but there is clearly
no likelihood of confusion of source between the Level 5 tools and the Sheetrock tools. In addition to the
aforementioned differences in design, the Level 5 tool handles are predominantly red with prominent
display of the Level 5 logo in contrast with the Sheetrock tool handles, which are predominantly green
with prominent display of the Sheetrock logo.
Almost every drywall hand tool on the market includes a contoured handle. This appears to be
merely an attempt by USG to intimidate Level 5 because Level 5’s drywall hand tool products have been
successfully selling in the marketplace.
Sincerely,
Attachments