Case 6:22-cv-00031-ADA Document 38-6 Filed 05/02/22 Page 1 of 5
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`Exhibit 5
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`Exhibit 5
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`Case 6:22-cv-00031-ADA Document 38-6 Filed 05/02/22 Page 2 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`KIRSCH RESEARCH AND
`DEVELOPMENT, LLC,
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`Plaintiff,
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`v.
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`TARCO SPECIALTY PRODUCTS, INC.,
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`Defendant.
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`
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`Case No. 6:20-cv-318-ADA
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`JURY TRIAL DEMANDED
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`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`AGAINST TARCO SPECIALTY PRODUCTS, INC.
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`1.
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`Plaintiff Kirsch Research and Development, LLC (“Kirsch” or “Plaintiff”) files this
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`First Amended Complaint against Defendant Tarco Specialty Products, Inc. (“Tarco” or
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`“Defendant”), and alleges as follows:
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`NATURE OF THE ACTION
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`2.
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`This is a civil action for infringement under the patent laws of the United States, 35
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`U.S.C. § 1, et seq.
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`3.
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`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`No. 6,308,482 (“the ’482 Patent”) on October 30, 2001. Kirsch is the legal owner of the ’482 Patent
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`by assignment. A true and correct copy of the ’482 Patent is attached hereto as Exhibit 1.
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`4.
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`Defendant has infringed and continues to infringe one or more claims of the ’482
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`Patent (collectively, the “Asserted Patent”) at least by making, using, importing, selling, and/or
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`offering to sell certain synthetic roofing underlayment products. Kirsch seeks, among other things,
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`monetary damages and injunctive relief.
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`1
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`Case 6:22-cv-00031-ADA Document 38-6 Filed 05/02/22 Page 3 of 5
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`things, Kirsch has marked its products themselves as well as product and marketing literature.
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`These products have been continuously marked by Kirsch since this time.
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`D.
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`38.
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`Defendant’s Knowledge Of The ’482 Patent
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`The synthetic underlayment market is relatively small. Kirsch is a well-respected
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`pioneer in the market and, over the last two decades, has manufactured and sold quality products
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`made in the United States. Kirsch was one of the first businesses in the United States to sell
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`synthetic underlayment products and helped to pioneer the industry in the United States.
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`39.
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`Since at least the introduction of Defendant’s accused products, Kirsch and
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`Defendant have been direct competitors in the synthetic underlayment market. See, e.g.,
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`https://www.tarcoroofing.com/images/pdf/TDIlistunderlaymentproducts.pdf (listing both
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`the
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`accused products and Kirsch’s SharkSkin-branded products as “an acceptable alternative to roof
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`underlayment”). Given Kirsch’s long-time presence in the market and regular advertising efforts,
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`Kirsch’s products are well-known in the industry. Similarly, given that the products and related
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`literature are consistently and prominently marked, on information and belief, the Asserted Patents
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`are also well-known within the industry.
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`40.
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`Kirsch attends approximately 6 to 10 trade shows on average a year. Typically, at
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`least Mark C. Strait attends on behalf of Kirsch and personally staffs his company’s booths at the
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`shows. Mr. Strait is actively involved at such shows and has become associated with Kirsch at
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`industry shows.
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`41.
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`At each show, Kirsch brings product literature and product samples that are marked
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`with the numbers of Kirsch’s patents. In addition, it conducts various product demonstrations at
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`such shows. Kirsch’s product literature and product samples have been marked with the numbers
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`of the ’482 Patent since around 2003.
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`12
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`Case 6:22-cv-00031-ADA Document 38-6 Filed 05/02/22 Page 4 of 5
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`42.
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`It is typical at trade shows for competitors to visit each other’s booths and obtain
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`information about the competing products. On information and belief, Defendant may have
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`obtained and studied Kirsch’s marked materials as a result of its trade show presence.
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`43.
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`Additionally, at certain trade shows, Defendant had a booth across the aisle from
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`Kirsch. Indeed, after observing Kirsch’s trade show display, it appears as if Defendant copied
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`Kirsch’s display, including a similar wood frame for a house to that used by Kirsch.
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`44.
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`Defendant employees staffing Defendant’s trade show booth included at least one
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`senior employee of Defendant named David. On information and belief, David held the position
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`of national sales manager, or a position with similar sales responsibilities.
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`45.
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`On information and belief, Defendant also learned of the ’482 Patent as a result of
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`Kirsch’s marked products and literature through Defendant’s competition with Kirsch and Kirsch’s
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`presence at trade shows.
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`46.
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`Finally, Mr. Strait, on behalf of Kirsch, and Defendant’s owner (an attorney) have
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`had at least one discussion. During this discussion, Mr. Strait informed Defendant’s owner that
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`Kirsch’s products were patented.
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`COUNT I
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`INFRINGEMENT OF PATENT NO. 6,308,482
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`47.
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`Kirsch realleges and incorporates by reference the foregoing paragraphs as if fully
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`set forth herein.
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`48.
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`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
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`imports certain products (“Accused Products”), such as the LeakBarrier EasyLay line of synthetic
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`underlayment products, including EasyLay UDL 15, EasyLay UDL 50, EasyLay UDL Basic, and
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`13
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`Case 6:22-cv-00031-ADA Document 38-6 Filed 05/02/22 Page 5 of 5
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`6.
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`Such other and further relief as the Court may deem to be just and proper.
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`DEMAND FOR A JURY TRIAL
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`Kirsch hereby demands a jury trial for all causes of action, claims, or issues in this action
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`that are triable as a matter of right to a jury.
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`Dated: August 10, 2020
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`Respectfully submitted,
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`RUSS, AUGUST & KABAT
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`By: /s/ Elizabeth L. DeRieux
`Marc A. Fenster (CA Bar No. 181067)
`Benjamin T. Wang (CA Bar No. 228712)
`Amy E. Hayden (CA Bar No. 287026)
`Theresa M. Troupson (CA Bar No. 301215)
`Jonathan Ma (CA Bar No. 312773)
`RUSS, AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`mfenster@raklaw.com
`bwang@raklaw.com
`ahayden@raklaw.com
`ttroupson@raklaw.com
`jma@raklaw.com
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`RINCON VENTURE LAW GROUP
`K. Andrew Kent (CA Bar No. 130097)
`2801 Townsgate Road, Suite 200
`Westlake Village, CA 91361
`Telephone: (805) 557-0580
`Facsimile: (805) 557-0480
`akent@rincongroup.com
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`Attorneys for Plaintiff
`Kirsch Research and Development, LLC
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`16
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