Walker v. Health International Corporation, et al

Filing 14

MINUTE ORDER that Plaintiffs Amended Complaint [11-1] is accepted for filing as of the date of this Minute Order, by Magistrate Judge Kristen L. Mix on 3/11/2013.(ervsl, )

IN THE UNTIED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO

Civil Action No.: 1:12-cv-03256-WJM-KLM
ANDRE WALKER,
Plaintiff,
v.
FITNESS QUEST, INC., a Delaware Corporation,
HEALTH INTERNATIONAL CORPORATION, a Florida corporation,
HSN, INC., a Delaware Corporation, HSN INTERACTIVE LLC, a Delaware Corporation,
WALGREENS CO., an Illinois Corporation, MEIJER, INC., a Michigan Corporation, WALMART CANADA CORP./LA COMPAGNE WAL-MART DU CANADA, a Canadian N.S.
Unlimited Liability Corporation, ROGERS BROADCASTING LIMITED DBA THE
SHOPPING CHANNEL, and FINGERHUT COMPANIES, INC., a Minnesota Corporation,

Defendants.

AMENDED COMPLAINT AND JURY DEMAND

Plaintiff, Andre Walker, By and through his attorney, David J. Furtado of Furtado Law
PC, and for his Amended Complaint against Defendants Fitness Quest, Inc, Health International
Corporation, HSN, Inc., HSN Interactive LLC, Walgreens Co., Meijer, Inc., Wal-Mart Canada
Corp./LA Compagne Wal-Mart DU Canada, Rogers Broadcasting Limited dba The Shopping
Channel, and Fingerhut Companies, Inc., states as follows:

I.
1.

PARTIES

Plaintiff Andre Walker (referred hereafter as “Walker”) is an individual with an

address of 846 S. Chambers Road, Apartment S303, Aurora, Colorado 80017.

2.

Defendant Fitness Quest, Inc. (referred hereafter as “Defendant Fitness”) is a

corporation duly organized and existing under the laws of the State of Delaware, having its
principal place of business at 1400 Raff Road, SW, Canton, Ohio 44750. Defendant Fitness may
be served by delivering a copy of the Summons and Complaint herein to an officer, a managing
or general agent, or to any other agent authorized by appointment or by law to receive service of
process.
3.

Defendant Health International Corporation (referred hereafter as “Defendant

Health International”) is a corporation duly organized and existing under the laws of the State of
Florida, having its principal place of business at 11880 28th Street North, St. Petersburg, FL
33716. Defendant Health International may be served by delivering a copy of the Summons and
Complaint herein to an officer, a managing or general agent, or to any other agent authorized by
appointment or by law to receive service of process.

Alternatively, Defendant Health

International may be served with process by servicing its registered agent Anthony A. Little at
11880 28th Street North, St. Petersburg, FL 33716.
4.

Defendant HSN, Inc. (referred hereafter as “Defendant HSN”) is a corporation

duly organized and existing under the laws of The State of Delaware, having its principal place
of business at 1 HSN Drive, St. Petersburg, FL 33729. Defendant HSN may be served by
delivering a copy of the Summons and Complaint herein to an officer, a managing or general
agent, or to any other agent authorized by appointment or by law to receive service of process.
Alternatively, Defendant HSN may be served with process of servicing its registered agent,
NRAI Services, Inc., at 2731 Executive Park Drive, Weston, FL 33331.

5.

Defendant HSN Interactive, LLC (referred hereafter as “Defendant HSN

Interactive”) is a corporation duly organized and existing under the laws of the State of

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Delaware, having its principal place of business at 1 HSN Drive, St. Petersburg, FL 33729.
Defendant HSN Interactive may be served by delivering a copy of the Summons and Complaint
herein to an officer, a managing or general agent, or to any other agent authorized by
appointment or by law to receive service of process. Alternatively, Defendant HSN Interactive
may be served with process by servicing its registered agent, NRAI Services, Inc., at 2731
Executive Park Drive, Weston, FL 33331.
6.

Defendant Walgreens Co. (“Defendant Walgreens”) is a corporation duly

organized and existing under the laws of The State of Illinois having its principal place of
business at 300 Wilmot Road, MS #3301, Deerfield, IL 60015. Defendant Walgreens may be
served by delivering a copy of the Summons and Complaint herein to an officer, a managing or
general agent, or to any other agent authorized by appointment or by law to receive service of
process.

Alternatively, Defendant Walgreens may be served with process by servicing its

registered agent, 2710 Gateway Oaks Drive, Suite 150N, Sacramento, CA 95833.
7.

Defendant Meijer, Inc. (“Defendant Meijer”) is a corporation duly organized and

existing under the laws of The State of Michigan having its principal place of business at 2929
Walker Avenue, NW, Grand Rapids, MI 49544. Defendant Meijer may be served by delivering
a copy of the Summons and Complaint herein to an officer, a managing or general agent, or to
any other agent authorized by appointment or by law to receive service of process.
Alternatively, Defendant Meijer may be served with process by servicing its registered agent,
The Corporation Company, 30600 Telegraph Road, Ste. 2345, Bingham Farms, MI 48025.
8.

Defendant Fingerhut Companies, Inc. (“Defendant Fingerhut”) is a corporation

duly organized and existing under the laws of The State of Minnesota having its principal place
of business at 6509 Flying Cloud Drive, Eden Prairie, MN 55344. Defendant Fingerhut may be

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served by delivering a copy of the Summons and Complaint herein to an officer, a managing or
general agent, or to any other agent authorized by appointment or by law to receive service of
process.

Alternatively, Defendant Fingerhut may be served with process by servicing its

registered agent at 6509 Flying Cloud Drive, Eden Prairie, MN 55344.
9.

Defendant Wal-Mart Canada Corp./LA Compagne Wal-Mart DU Canada, a

Canadian N.S. Unlimited Liability Corporation (“Defendant Wal-Mart”) duly organized and
existing under the laws of Canada having its principal place of business in Canada. Defendant
Wal-Mart may be served by delivering a copy of the Summons and Complaint herein to an
officer, a managing or general agent, or to any other agent authorized by appointment or by law
to receive service of process. Alternatively, Defendant Wal-Mart may be served with process by
servicing its registered agent Janie Angus, 1300-1969 Upper Water Street, Purdy’s Wharf Tower
II Halifax NS, Canada B3J 2R7.
10.

Defendant Rogers Broadcasting Limited dba The Shopping Channel (“Defendant

Shopping Channel”) duly organized and existing under the laws of Canada having its principal
place of business in Canada. Defendant Shopping Channel may be served by delivering a copy
of the Summons and Complaint herein to an officer, a managing or general agent, or to any other
agent authorized by appointment or by law to receive service of process.

Alternatively,

Defendant Shopping Channel may be served with process by servicing its registered agent
Catherine Douglas, 9th Floor, 333 Bloor Street East, Toronto, Ontario M4W 1G9.

II.
11.

JURISDICTION AND VENUE

Walker’s action arises under the patent laws of the United States of America as

codified in 35 U.S.C. § 101 et. seq. for patent infringement. This Court has subject matter

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jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the
patent laws of the United States, including 35 U.S.C. § 271 et seq.
12.

Defendants are subject to personal jurisdiction in The United States District Court

for The District of Colorado since they regularly conduct business within this judicial district,
have had systematic and continuous contacts with this judicial district, have conducted activities
related to Walker’s claims within this judicial district, and have damaged Walker by their
tortuous conduct in this judicial district. Furthermore, this Court has personal jurisdiction over
Defendants because Defendants have committed acts within Colorado and this judicial district,
giving rise to this action, and Defendants have established minimum contacts with the forum
such that the exercise of jurisdiction over Defendants would not offend traditional notions of fair
play and substantial justice.
13.

Venue is proper in this district pursuant to 28 U.S.C. § 1391 and 28 U.S.C. §

1400(b) since Defendants are subject to personal jurisdiction within this judicial district and a
portion of the events giving rise to Walker’s claims and damages resulting thereform occurred in
this judicial district. Furthermore, Defendants maintain an online presence via a website on the
world wide web. Defendants’ website is interactive, and as such, Colorado residents can browse
and purchase Defendants’ products from within the State of Colorado. Furthermore, Defendants
broadcast television programming within the State of Colorado in order to sell products and
services to Colorado residents.
14.

Plaintiff’s claim for patent infringement arises from Defendants’ infringing

activities in the State of Colorado and throughout the United States wherein Defendants’
infringing activities have caused and are causing substantial harm to Plaintiff.

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III.
15.

GENERAL ALLEGATIONS

Walker had an idea whereby he would tone his abdominal muscles by repeated

rotation of his upper body while keeping his lower body stationary. He added resistance in order
to speed this process.
16.

In order to test his idea, Walker attached exercise bands to the ends of a

broomstick, positioning the broomstick across the back of his neck, holding on to each end of the
broomstick, stepping on the free ends of the exercise bands, and then rotating his upper body.
He noticed that the next day his abdominal muscles were very sore and he realized that he could
make a device that could be used to effectively exercise abdominal muscles.
17.

Walker also attempted using the initial broomstick exercise band device to

perform other exercises such as biceps curls and overhead shoulder press and realized by doing
so that his device could be used for exercising many different muscle groups.
18.

Walker noticed that the initial broomstick exercise band devise was

uncomfortable when performing exercises since it was uncomfortable when the flat broomstick
was resting on his neck so he came up with idea that the device would be much more
comfortable on his neck if the broomstick was slightly curved rather than straight.
19.

Walker continued to improve the original design of the exercise device, and, by

December 9, 2000, Walker had created a basic drawing of his invention. Walker then chose the
name Twister Sport for his device which he hoped to manufacture and sell.
20.

The next step Walker took was to find an engineer who would produce a

prototype of his device so he could attempt to patent his device. On May 9, 2011 Walker signed
a Confidential Disclosure Agreement with James Rasmusson. Mr. Rasmusson is the president of

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the engineer and manufacturing firm, Retronix, Inc. Retronix made the prototype of Walker’s
invention. The cost of the prototype was $3,500.00.
21.

Walker recognized the need for additional units in order to facilitate the

production of an advertising video he could use to help sell his inventive exercise device.
Retronix, Inc. suggested to Walker that Frank Wally could produce additional prototypes as he
was less expensive than Retronix, Inc. Walker hired Mr. Wally to manufacture twenty (20)
prototypes of Walker’s invention for $8,000.00. Walker paid $2,000.00 in advance then Walker
paid $6,000.00 on November 15, 2002.
22.

On September 26, 2002, Walker filed a patent application entitled, “Device for

Exercising Abdominal Muscles” directed to an invention for exercising human abdominal
muscles. The application issued as U.S. Patent No. 7,090,627 on August 15, 2006 with fourteen
(14) claims, including device and method claims.

Furthermore, Plaintiff manufactured,

marketed, and sold a product that embodied the invention of U.S. Patent No. 7,090,627.
Plaintiff’s product that embodied the invention has proper patent markings, thereby providing
proper notice to the public and Defendants.
23.

In an effort to commercialize the invention, Walker used the twenty (20)

Prototypes to create an infomercial with Mark Fukai of 3 River Films of Denver, Colorado for a
cost of approximately $50,000.00. Walker has paid $40,000.00 of the $50,000.00 bill to date.
24.

In order to air the infomercial on television, Walker decided that he needed to

stock enough Twister Sport product to be able to fulfill purchase orders he understood that would
be the result of airing the infomercial. On information and belief, other than Defendants’
product which is an embodiment of Plaintiff’s product of which is complained herein, no other
company markets or sells a product similar to Plaintiff’s product that embody the U.S. Patent No.

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7,090,627. As such, Plaintiff’s products embodying the U.S. Patent No. 7,090,627 have a unique
trade dress. Plaintiff’s goods have come to be well known and accepted by the purchasing public
in connection with its unique trade dress which serves to distinguish its goods from the goods of
others. Incorporating the invention of U.S. Patent No. 7,090,627, Plaintiff’s products have a
unique appearance which is readily identified with Plaintiff.
25.

In 2002, Brett Beck put Walker in contact with Frank Wang of Gymmax Co., Ltd.

a manufacturer in Taiwan with whom Mr. Beck had already successfully worked. Walker and
Mr. Beck traveled to Taiwan to meet with Mr. Wang and discuss manufacturing commercially
relevant numbers of Walker’s Twister Sport device.
26.

Walker chose the best components from the Retronix, Inc. and the Wally

prototypes and sent them to Gymmax. Plaintiff wished to create goodwill and a valuable
reputation under its unique trade dress. Plaintiff believed that the maintenance of high standards
of quality and excellence for its goods would contribute to this valuable goodwill and reputation.
27.

Gymmax manufactured one prototype of the Twister Sport device, but it not meet

Walker’s specifications regarding the curved portion of the neck piece. Walker next sent a
drawing to Wang at Gymmax to further describe the specifications of the neck portion.
28.

On March 3, 2004, Gymmax quoted Walker a price of $9.30 per unit for five

thousand (5000) Twister Sport sets. On March 8, 2004, Gymmax quoted $5,500.00 for two
tooling charges that were necessary for Gymmax to mass produce Walker’s Twister Sport.
29.

In 2004 Walker attempted to promote the Twister Sport himself. He formed a

company, Nu Era Fitness, LLC, developed a business plan, contacted advertisers, took
promotional photographs of the product and of models using the product, and established the
Twister Sport Website.

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30.

On March 29, 2005, Nu Era Fitness received its first request for a Twister Sport

from a potential customer. Nu Era Fitness was unable to fill the order because Walker had not
been able to start the manufacture of the Twister Sport due to lack of funds for the tooling.
31.

On April 15, 2005, Nu Era Fitness submitted and Twister Sport advertisement to

Denver based 5280 Magazine. Potential customers contacted Nu Era Fitness in response to this
advertisement in an attempt to buy the Twister Sport.
32.

Walker sought help in marketing his product. Walker was introduced to Thomas

Cheng of Direct Response Holdings, LLC by Darren Fisher of Icon Media, Inc. Direct Response
Holdings is a direct response marketing company. On August 23, 2005, Walker and Direct
Response Holdings executed a license agreement. Under the agreement, Walker sought and
obtained terms such that he would have someone other than himself do the majority of the work
in manufacturing and selling the product. Walker received a fee up front and would receive a
monthly payment for a period of time prior to sales achieving modest levels then he would
receive 35-40% of the profits from sales of the product. According to the agreement, DRH was
to manage the business and operations of the Twister Sport product, maintain the website for
ordering the product, and advertise, promote, market, and sell the Twister Sport.
33.

On November 8, 2005, Cheng terminated the agreement due to financial

difficulties. Walker decided to attempt to find a new investor due to the termination.
34.

On November 8, 2005, Gymmax informed Walker that the new quote for

manufacturing the Twister Sport would be $15.00 per unit as opposed to the $9.30 per unit
quoted on March 3, 2004.
35.

In 2007 a friend of Walker’s contacted him about a product her mother purchased

from the Home Shopping Network bearing Tony Little’s name. Walker was alarmed by how

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similar the friend’s description of the HSN product sounded to his patented invention. The Tony
Little product, called the Easy Shaper, was at that time being sold over the Internet at
http://www.tonylittle.com and via television infomercials. Furthermore, on information and
belief, Defendants have marketed and sold and are currently marketing and selling products,
such as Plaintiff’s invention, that embody the invention of U.S. Patent No. 7,090,627.
36.

On information and belief, Defendants have deliberately and intentionally

continued to sell such product without any license or authority from Plaintiff. Such behavior by
Defendants is outrageous because Defendants had full knowledge – both actual and constructive
– of Plaintiff’s invention of U.S. Patent No. 7,090,627 and Plaintiff’s rights therein but
deliberately and intentionally chose to disregard Plaintiff’s rights in U.S. Patent No. 7,090,627
by manufacturing and/or selling products embodying the U.S. Patent No. 7,090,627 without
approval or authority from Plaintiff.
37.

In interstate commerce and within this District, Defendants have offered to sell,

sold and are selling products that infringe the U.S. Patent No. 7,090,627, thereby causing harm to
Plaintiff. Upon information and belief, Defendants knowingly and intentionally sold and
continue to sell the infringing products.
38.

Plaintiff has sold products bearing the design claimed in U.S. Patent No.

7,090,627. As contemplated by the Patent Act, 35 U.S.C. § 287, Plaintiff has provided notice of
its U.S. Patent No. 7,090,627 by marking the patent number on Plaintiff’s products embodying
the patented design since on or about the time the United States Patent & Trademark Office
issued the U.S. Patent No. 7,090,627 and Plaintiff began selling said products to the public.
39.

Defendants’ infringement of U.S. Patent No. 7,090,627 has been and continues to

be intentional and willful.

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40.

Defendant Fitness Quest has sold, and currently sells, and offers to sell the Tony

Little Easy Shaper on its website http://www.fitnessquest.com.
41.

Defendant HSN has sold, and currently sells, and offers to sell the Tony Little

Easy Shaper (hereinafter “Easy Shaper”) on its website http://www.hsn.com.
42.

Defendant Walgreens has sold, and currently sells, and offers to sell the Tony

Little Easy Shaper at its various stores and on its website for the price of $59.99.
43.

Defendant Wal-Mart has sold, and currently sells, and offers to sell the Tony

Little Easy Shaper at its various stores.
44.

Defendant Health International Corporation has sold, and currently sells, and

offers to sell the Tony Little Easy Shaper at its various stores.
45.

Defendant Meijer has sold, and currently sells, and offers to sell the Tony Little

Easy Shaper at its various stores.
46.

Defendant Fingerhut has sold, and currently sells and offers to sell the Tony Little

Easy Shaper at its various stores.
47.

Defendant HSN Interactive LLC has sold, and currently sells, and offers to sell

the Tony Little Easy Shaper at its sites.
48.

Defendant Rogers Broadcasting Limited dba The Shopping Channel has sold, and

currently sells, and offers to sell the tony Little Easy Shaper at its sites.
49.

The Easy Shaper is a device that aids a user is exercising their abdominal

muscles.
50.

The Easy Shaper has an elongated rigid member that has an arcuate portion

configured to accommodate a back portion of a user’s neck.

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51.

The Easy Shaper has two extendible resistance members, with one end of each

extendible resistance member being attached to an elongated rigid member.
52.

The Easy Shaper has extendible resistance members adapted such that a user’s

foot can hold one end of the resistance member in association with the user’s foot.
53.

The Easy Shaper has two elastic members that comprise an elastic strap or band

that can be lengthened or shortened, with the shortening of the elastic element providing a
preload existing in the elastic members even when the user is in a rest position.
54.

The Easy Shaper has elastic members that are adjustable so that a user may adjust

the intensity of an exercise by either lengthening or shortening the static length of the elastic
member.

When a user rotates the rigid member resting on his/her neck, such rotational

movement causes a change in extension of the extendible resistance member and the extendible
resistance member exerts a source on the rigid member opposing the change in extension.
55.

The Easy Shaper has extendible resistance members that are adjustable to vary the

length of the extendible member and the degree of resistance to changes in extension exhibited
by the extendible member.
56.

The moment of inertia exerted by the rigid member of the Easy Shaper on the

upper body of a user, remains substantially constant as the resistance to changes in extension of
the extensible resistance member is varied. The Easy Shaper includes a rigid member that
comprises two or more separable sections that may be assembled to form an elongated rigid
member.
57.

The Easy Shaper has a mass of less than 5 kg.

58.

The Easy Shaper has bands of material that include elastic material.

59.

The Easy Shaper has a rigid elongated member that extends across the shoulders

12

of a user and protrudes beyond each shoulder such that at least one of a user’s hands may hold
the rigid member in place across the shoulders behind a user’s neck.
60.

The Easy Shaper has an anchoring element designed and configured to be held by

the weight of the user.
61.

The Easy Shaper has an anchoring element that is designed and configured to be

anchored by a portion of the user’s lower body.
62.

The Easy Shaper has an anchoring element designed to engage at least one of the

user’s feet.
63.

The Easy Shaper has an extendible resistance member that includes a non-elastic

and an elastic element.
IV.

FIRST CLAIM FOR RELIEF

64.
Walker hereby incorporates by reference paragraphs 1 through 63 as though fully
set for the above.
65.

Walker owns the ‘627 patent which was duly and legally issued by the United

States patent and Trademark Office.
66.

Defendants have infringed and/or induced infringement of one or more claims of

the ‘627 patent directly and/or indirectly in violation of 35 U.S.C. §271 by making, using, selling
and/or offering for sale the Tony Little Easy Shaper in the United States.
67.

Pursuant to 35 U.S.C. § 284, Walker is entitled to damages for Defendants’

infringement.
68.

Defendants infringement of the ‘627 patent was will and in wanton disregard for

Walker’s patent rights.
69.

Defendants’ continued actions, after notification of Walker’s patent rights,

constitute objective recklessness and/or willful and infringing conduct.

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V.

PRAYER FOR RELIEF

WHEREFORE Walker prays for judgment in his favor and against Defendants as
follows:
a.

that Defendants, its officers, directors, agents, servants, employees, privies,

representatives, attorneys, parent and subsidiary corporations or other related entities, successors
and assigns, and all persons in active concert or participation with any of them, be permanently
enjoined from directly or indirectly infringing, inducing others to infringe and/or contributing to
the infringement of the ‘627 patent;
b.

that Defendants be required to provide an accounting of damages resulting from

Defendants’ infringement of the ‘627 patent;
c.

that Walker be awarded damages in an amount to be determined at trial for all

infringing activities which are at least a reasonable royalty;
d.

that Walker be awarded treble damages by reason of the willful, wanton, and

deliberate nature of Defendants’ infringement pursuant to 35 U.S.C. §284;
e.

that Walker be awarded punitive damages;

f.

that Walker be awarded his pre-judgment and post-judgment interest;

g.

that Walker be awarded costs and expenses of suit, including expert witness fess;

h.

that Walker be awarded his attorney fees as that is an exceptional case pursuant to

35 U.S.C. § 285;
i.

that Defendants be ordered to deliver to Walker, for destruction at Walker’s

option, all products that infringe the patent in suit;
j.

that Defendants be required to account for all gains, profits, advantages, and

unjust enrichment derived form its violations of law; and,

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k.

that Walker be awarded other and further relief as the Court deems appropriate

and just.

VI.

JURY DEMAND

Walker hereby requests a jury trial on all issues so triable.
Dated this 1st day of March, 2013.
FURTADO LAW PC
/s/ David J. Furtado
David J. Furtado
Attorney for Plaintiff Walker

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