Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 1 of 20 UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF NEW YORK DEFENSHIELD INC. Plaintiff, v. Civil Action No.: 5:10-cv-01140-GTS-DEP FIRST CHOICE ARMOR & EQUIPMENT, INC., and D-BACK ACQUISITION CO. Defendants. SECOND AMENDED COMPLAINT Plaintiff Defenshield Inc., by and through its attorneys, Bond, Schoeneck & King, PLLC, hereby alleges as its Complaint against Defendants First Choice Armor and Equipment, Inc. and D-Back Acquisition Co. as follows: JURISDICTION AND VENUE 1. This is an action for patent infringement brought under the patent laws of the United States, 35 U.S.C. 271 et seq. This Court has subject matter jurisdiction in this action pursuant to 28 U.S.C. 1331 and 1338(a), and 35 U.S.C. 281.
Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 2 of 20 2. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c), and 1400 as the defendants has committed acts of infringement in this District. PARTIES 3. Plaintiff Defenshield Inc. ( Defenshield ) is a corporation organized and existing under the laws of the State of New York, and having a principal place of business at 14 Corporate Circle, East Syracuse, New York 13057. 4. Upon information and belief, Defendant First Choice Armor & Equipment, Inc. is a corporation organized and existing under the laws of the State of Massachusetts, and having offices at 159 Yelton Street, Spindale, North Carolina 28139. 5. Upon information and belief, Defendant D-Back Acquisition Co. ( D-Back ) is a corporation organized and existing under the laws of the State of Delaware, and having offices at 23040 N. 11 th Avenue, Phoenix, Arizona 85003. CAUSE OF ACTION FOR PATENT INFRINGEMENT 6. Defenshield was founded in 2002 in response to the need to protect security personnel in airports after September 11, 2001. To meet this need, Defenshield invented and developed a ballistic shield called the Mobile Defensive Fighting Position (MDFP) comprised of a bulletproof base unit, a bracket supporting a bulletproof upper wall, and casters attached to the base that allow the MDFP to be more easily moved. 7. Since 2002, Defenshield s MDFPs have been deployed around the world and are saving the lives of a diverse range of customers, including the U.S. Marines, U.S. Army, U.S. Navy, U.S. Air Force, the Pentagon Force Protection Agency, the Defense Intelligence Agency and the U.S. Naval Observatory, as well as in courthouses, military bases, ships, and nuclear facilities. 2
Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 3 of 20 8. Upon information and belief, on or around September 2010, Defendant First Choice was engaged in the business of making, selling, offer to sell, using and/or importing a certain barrier referred to as the Rolling Bunker ( Accused Device ) for use by various governmental and private entities. 9. Upon information and belief, on or around September 2010, Defendant D-Back acquired certain assets of Defendant First Choice and continued in the business of making, selling, offer to sell, using and/or importing, either on behalf of Defendant First Choice or as the successor-in-interest of Defendant First Choice. 10. On December 14, 2010, Defenshield, as assignee, was awarded United States Patent No. 7,849,781 ( the 781 Patent ), entitled Bullet Resistant Barrier, for its ballistic shield invention. A copy of the 781 Patent is attached to hereto as Exhibit A. 11. The Accused Device includes a bulletproof base unit, a bracket supporting a bulletproof upper wall, and casters attached to the base. A marketing flyer and photographs showing the structure of the Accused Device is attached hereto as Exhibit B. 12. Upon information and belief, Defendant D-Back and/or Defendant First Choice continued to engage in the business of making, selling, offer to sell, using and/or importing Roller Bunkers subsequent to the issuance of the 781 patent to governmental and private entities. 13. The Accused Device contains each and every element of at least one claim of the 781 patent, either literally or under the doctrine of equivalents. As a result, the manufacture, use, sale, offer for sale and/or importation of the Accused Devices constitutes patent infringement under 35 U.S.C. 271 et seq. 3
Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 4 of 20 14. Upon information and belief, Defendants will continue to infringe the 781 Patent unless enjoined by this Court from making, using, offering for sale, importing and/or selling such Accused Devices within the United States. 15. Defendants acts of infringement are wanton, willful, and performed with complete disregard for Defenshield s statutory rights. 16. Defendants acts of infringement have caused both immeasurable and measurable damage to Defenshield. 17. Defenshield has no adequate remedy at law. PLAINTIFF DEMANDS A TRIAL BY JURY WHEREFORE, Plaintiff Defenshield prays that the Court enter judgment: (a) finding that Defendants have infringed U.S. Patent No. 7,849,781; (b) pursuant to 35 U.S.C. 283, preliminarily and permanently enjoining Defendants, its subsidiaries, affiliates, divisions, officers, agents, servants, employees, directors, partners, representatives and all parties in active concert and/or participation with them, from directly or indirectly making, having made, selling, offering for sale, distributing, using, or importing into the United States products that infringe U.S. Patent No 7,849,781, including Defendants barrier referred to the Rolling Bunker; (c) (d) finding that Defendants acts of infringement are willful; pursuant to 35 U.S.C. 284, ordering Defendants to account for and pay to Plaintiff Defenshield all damages caused by Defendants infringement of U.S. Patent No 7,849,781, including lost profits and interest, but in no event less than a reasonable royalty; (e) awarding treble damages pursuant to 35 U.S.C. 284; 4
Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 5 of 20 (f) finding that this is an exceptional case pursuant to 35 U.S.C. 285 and awarding Plaintiff Defenshield its prejudgment interest, costs and attorneys fees; and (g) granting Plaintiff Defenshield such other and further relief as the Court may deem just and proper. Respectfully submitted, Dated: July 11, 2012 s/david L. Nocilly By: George R. McGuire (Bar Roll No. 509058) David L. Nocilly (Bar Roll No. 510759) BOND, SCHOENECK & KING, PLLC One Lincoln Center Syracuse, New York 13202-1355 Telephone: (315) 218-8000 Facsimile: (315) 218-8100 E-mail: gmcguire@bsk.com dnocilly@bsk.com Attorneys for Plaintiff, Defenshield Inc. 5 1787183.1 6/12/2012
Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 6 of 20 EXHIBIT A
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ROLLING BUNKER LEVEL IV Case 5:10-cv-01140-GTS-DEP Document 33 Filed 07/11/12 Page 17 of 20 Fort Drum The First Choice Armor & Equipment Rolling Bunker Level IV provides law enforcement and military personnel superior portable ballistic and blast protection. The Rolling Bunker Level IV is designed to protect personnel against threat level IV 7.62x63, 30-06 166gr. APM2 and lesser threats. The Rolling Bunker Level IV provides up to 12 square feet of viewing area in a highly portable protective bunker from handgun and rifle fire. Sizes available up to 48 Wx84 H STANDARD FEATURES Solid steel lower front plate and side support structure level III ballistic protection Removable/ replaceable Level IV Ballistic glass viewport Fork Lift slots Tie down anchor points FLAT FREE ATV tires with rear casters All ballistic components meet performance requirements of NIJ 0108.01 for ballistic protective equipment for threat level Optional Equipment Tow Bar - Specify Pintle or Ball Mount Awning - protects users from sun, rain and snow 36 x52 Standard Size Camouflage appliqué Bunker Bridge allows the connection of two Rolling Bunkers BALLISTIC PROTECTION Rolling Bunker Level III shown above with Flat Free ATV Tire and caster set flat black finish. All Rolling Bunkers are sandblasted and primed with industrial, rusty metal primer for optimal corrosion resistance then top coated with flat black industrial enamel paint for ultimate durability Optional colors: OD GREEN, GLOSS BLACK, GRAY and WHITE Other colors available THREAT LEVEL IV: 7.62x63 30-06 166gr. APM2 @ 2800 FPS min 2900 FPS MAX First Choice Armor & Equipment certified to ISO 9001/2008 for the design and manufacture of body armor and protective equipment for law enforcement and military use by NQA, an ANAB accredited third First Choice Armor & Equipment 159 Yelton St. Spindale N.C. 28139 PH: 828.288.6890 FX: 828.288.6748 customerservice@firstchoicearmor.com
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