The non-disclosure also did not grant a license to High Water, nor any third party, for any proprietary rights under any patent applications.
Orlando, Florida (PRWEB) March 28, 2017
On behalf of Kevin McGarry, LLC, doing business as Bucket Creations, a demand for mediation and cease and desist notice for patent infringement has been filed against Bucket Innovations, LLC (Bucket Innovations), High-Water Flood Group, Inc. (High Water) and Global Consumer Innovations, LLC (GCI), as to the manufacturing and sales of any and all products of any patent or patent application derived from United States Patent 6,471,221.
The demand for mediation, and related cease and desist notice, follow a complaint and pending lawsuit filed in the United States District Court for the Middle District of Florida on February 23, 2017, Case No. 6:17-cv-00315, against Bucket Innovations, High Water, and GCI along with co-defendants and officers of said companies, Casey Holder, Brian O’Leary, David Quinn and Ron German. “The law suit alleges that Bucket Innovations, GCI and High Water are effectively all the same business entity, as they share members, officers and directors and provide the same goods and services to the consuming public,” states Coleman Watson of Watson LLP who is representing Kevin McGarry, LLC, dba Bucket Creations, in this case. All defendants have been served with the complaint, but the case is still in its infancy. The defendants are anticipated to file a response to the complaint on or about April 3, 2017.
According to court documents, at dispute is the licensing and manufacturing rights for innovation in the manufacturing and consumer use of plastic utility pails. The lawsuit alleges that McGarry is the sole inventor of the ‘221 Patent that features a tubular handle built into the lower portion of a trash can, and he conceived of and sought improvement of the ‘221 Patent by refining the tubular handle and applying the technology to differing sized containers, including five gallon buckets. McGarry then referred to this new improvement as Grip-N-Grab™ buckets. A more specific timeline of these inventions and patents follows.
Timeline and Facts Alleged in the Complaint Filed in Florida Federal Court
The complaint filed in the lawsuit on February 23, 2017, states that in June of 2013, McGarry entered into a certain, non-disclosure agreement with High Water that protected all confidential and proprietary information offered by McGarry to High Water. According to the complaint, “the non-disclosure agreement strictly prohibited High Water from disclosure of all methods, processes and know-how.” The complaint further alleges that the non-disclosure also did not grant a license to High Water, nor any third party, for any proprietary rights under any patent applications, such as those at issue in the lawsuit.
As alleged in the complaint, McGarry then went on to file a provisional patent application for the Grip-N-Grab™ buckets in September of 2013, and in January of 2014, McGarry entered into a memorandum of understanding with GCI for a licensing agreement, granting GCI the right to make, sell and offer the invention imparted by the ‘221 Patent, as well as any derivative applications, and also granted GCI trademark rights to Grip-N-Grab™. The memorandum of agreement stated that McGarry retained all ownership of intellectual property including additions, improvements, alterations or modifications to the Grip-N-Grab™ technology.
The allegations of the complaint are that in May of 2014, however, O’Leary, Quinn, Holder and German filed both a design patent application and a utility patent application, claiming the Grip-N-Grab Buckets, which at a minimum, is derived from the ‘221 Patent and the provisional patent application filed by McGarry in September of 2013. The design patent application issued as the ‘385 Patent, and the utility patent application is still pending. In December of 2014, Holder filed a second design patent application claiming the ornamental design of the Grip-N-Grab Buckets, again, without disclosing McGarry to the United States Patent & Trademark Office (USPTO) as an inventor on the application, which issued in July 2016, as the ‘032 Patent. “The lawsuit alleges that Bucket Innovations is publicly passing off the underlying technology behind the ‘385 Patent, the ‘032 Patent, and the utility patent application as its own, despite that each of these are derived from the ‘221 Patent,” Watson indicates.
From mid-late 2014 through December of 2014, McGarry and GCI had certain disputes regarding terms of the first licensing agreement and engaged in negotiations that resulted in a second licensing agreement. The new contract rescinded the first licensing agreement with the purpose of revising the compensation structure identified in the first.
Copies of all documents in the public record regarding this matter are available.