Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 1 of 8 FILED IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division PROTOTYPE PRODUCTIONS, INC. 21641 Beaumeade Circle Ashburn, Virginia 20147 and PROTOTYPE PRODUCTIONS INCORPORATED VENTURES TWO, LLC 21641 Beaumeade Circle Ashburn, Virginia 20147 Plaintiffs, v. Civil Action No. RESET, Inc. 49 Strathearn Place Simi Valley, California 93065 Defendant. 2:l\CVlc lp COMPLAINT Plaintiffs Prototype Productions, Inc. ("PPI" and Prototype Productions Incorporated Ventures Two, LLC ("PPIV2" (individually a "Plaintiff and collectively the "Plaintiffs", by and through their undersigned counsel, hereby bring this action against Defendant RESET, Inc. ("RESET" or "Defendant", for patent infringement, averring as follows: The Parties 1. Plaintiff PPI is a unique multi-platform service provider which partners directly
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 2 of 8 with clients to provide services in research, product development, manufacturing, rapid prototyping, and commercialization. PPI brings every phase of development under one roof to provide a turnkey solution to any stage of a client's project, including the development of products in the areas of biotech/medical, digital life, aerospace, defense, industrial/consumer, and national security. PPI also designs and develops various specialty products including, but not limited to, firearms attachments, systems and accessories. PPI is a corporation organized under the laws of the State of Maryland with a principal place of business located at 21641 Beaumeade Circle, Ashburn, Virginia 20147. 2. Plaintiffs own an exclusive license to U.S. Patent No. 7,627,975 (the "Hines Patent", entitled "Electrified Handguard," issued by the United States Patent and Trademark Office on December 8,2009. A true and correct copy of the Hines Patent is attached hereto as Exhibit A. The owner and licensor of the Hines Patent is its inventor, Stephen C. Hines, a resident of the State of New Mexico. PPI acquired its rights to the Hines Patent in an Exclusive License Agreement ("ELA" with Mr. Hines dated April 5, 2010. Pursuant to the ELA, Mr. Hines granted PPI the first right to enforce any patent or copyright falling within the intellectual property of the Hines Patent, including the right to initiate and maintain suit to recover, for its own account, any damages due to infringement of the Hines Patent. 3. The Hines Patent teaches and claims an improvement to the traditional accessory mounting rail by providing a Powered Rail (also termed an "electrified handguard" for firearms; the Rail supplies electrical power to Rail mounted accessories such as flashlights and laser sights. To reduce the weight of these power-consuming accessories, as well as the proliferation of batteries used to power these power-consuming accessories, a common power source is used to energize whatever power-consuming accessory is attached to the Powered Rail of the weapon.
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 3 of 8 The Powered Rail provides a point of mechanical and electrical interconnection for the powerconsuming accessories to provide quick connect mounting and dismounting of the powerconsuming accessory, absent the use of connectors with their tethering cables, which are susceptible to entanglement. The Powered Rail includes powered electrical contacts which are connected to a power source, such as a replaceable battery, for electrically connecting to the accessory and providing the power necessary to operate the power-consuming accessory. 4. Plaintiff PPF/2 is a majority-owned subsidiary of PPI, which PPI created to capitalize, develop, and commercialize the Powered Rail technology. PPIV2 is a limited liability company organized under the laws of the State of Delaware with a principal place of business located at 21641 Beaumeade Circle, Ashburn, Virginia 20147. Pursuant to an Assignment Agreement dated November 23,2010, PPIV2 became the assignee of all of PPI's rights under the ELA including, but not limited to, PPI's right to enforce any patent or copyright falling within the intellectual property of the Hines Patent. 5. Pursuant to the exclusive license rights set forth in the ELA as assigned by PPI to PPIV2, Plaintiffs manufacture and sell the Powered Rail for, inter alia, the M4 Carbine and AR- 15 based weapon platforms. Exhibit B. Customers of Plaintiffs' Powered Rail product include the United States Army and prime weapons and accessory manufacturers. 6. Defendant RESET is a corporation organized under the laws of the State of California and maintains a principal place of business at 49 Stratheam Place, Simi Valley, California 93065. RESET is primarily engaged in the business of refurbishing equipment and manufacturing replacement parts for the telecommunications, medical and general electronics industries. 7. RESET also manufactures, markets, and sells a product very similar to the PPI
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 4 of 8 Powered Rail, which RESET calls the "Rifle Integrated Power Rail" ("RIPR". RESET claims that its RIPR product is the "first integrated powered rail adapter for any tactical weapon..." Exhibit C. In separate press releases, RESET touts its partnership and teaming agreements with rifle accessory and component manufacturers, many of which allegedly are "working towards the RIPR platform, including Laser Devices Inc. who recently teamed with RESET to provide some of the first 'purpose built' accessory devices." Exhibit D. 8. RESET maintains a website located at http://www.reset-inc.com on which it advertises RIPR for sale, as well as under a separate web address, http://www.riprrail.com. 9. RESET markets, advertises and sells its RIPR product throughout the United States, including in the Commonwealth of Virginia and in this judicial district, and/or causes its RIPR product to enter into the stream of commerce in the Commonwealth of Virginia, including in this judicial district. RESET claims that it has teamed with tactical systems integrator ATK, which maintains an office in Arlington, Virginia, to sell its RIPR product to commercial and government entities, including the United States Army. Exhibit E. Jurisdiction and Venue 10. The Court has original subject matter jurisdiction over this case pursuant to 28 U.S.C. 1331 because this dispute arises under the laws of the United States. 11. The Court also has original subject matter jurisdiction over this case pursuant to 28 U.S.C. 1338 because this dispute involves claims under United States patent law. 12. The Court has personal jurisdiction over Defendant RESET because RESET has substantial contacts with this jurisdiction sufficient to subject it to personal jurisdiction in this district, including its acts of infringement giving rise to this action. 13. Venue is proper in the Alexandria Division of this Court pursuant to 28 U.S.C.
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 5 of 8 1391 and Local Civil Rules 3(B(1 and (C. COUNTI (Infringement of the Hines Patent 14. Plaintiffs repeat and incorporate by reference the allegations set forth in Paragraphs 1-13 above. 15. This is a claim by Plaintiffs against RESET for infringement of the Hines Patent under 35 U.S.C. 271, etseq. 16. PPI is the exclusive licensee of the Hines Patent under the ELA. 17. PPI assigned to PPIV2 all of its rights under the ELA including, but not limited to, PPI's right to enforce any patent or copyright falling within the intellectual property of the Hines Patent. 18. Neither Mr. Hines nor Plaintiffs have licensed or otherwise granted any of their rights in the Hines Patent to RESET. 19. RESET markets and sells its RIPR product within this judicial district directly to customers or indirectly through its teaming partners to customers including, but not limited to, the United States Department of Defense. 20. RESET'S RIPR product infringes many of the claims of the Hines Patent, either literally and/or under the Doctrine of Equivalents. 21. RESET's manufacture, use, offering for sale, and/or sale of its RIPR product is in violation of 35 U.S.C. 271. 22. RESET, with knowledge of the Hines Patent and with knowledge that one or both of the Plaintiffs owns an exclusive license to the Hines Patent, has been infringing, and continues to infringe, the Hines Patent, in violation of 35 U.S.C. 271. 23. RESET, with knowledge of the Hines Patent and with knowledge that one or both
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 6 of 8 of the Plaintiffs owns an exclusive license to the Hines Patent, has been and is infringing the Hines Patent in violation of 35 U.S.C. 271(b and/or 35 U.S.C. 271(c by inducing others including, but not limited to, its customers, agents, teaming partner organizations, and affiliates, to infringe claims of the Hines Patent and/or contribute to the infringement of the Hines Patent. 24. RESET's infringement of the Hines Patent has been knowing, deliberate and willful, justifying the assessment of (1 treble damages pursuant to 35 U.S.C. 284 and (2 attorneys' fees pursuant to 35 U.S.C. 285. 25. The infringing acts of RESET have been the actual and proximate cause of damage to Plaintiffs. 26. Plaintiffs have sustained substantial damages and will continue to sustain damages as a result of RESET's infringement of the Hines Patent. 27. The sales of RIPR by RESET are sales that Plaintiffs would have otherwise made. 28. In light of RESET's infringement of the Hines Patent, Plaintiffs are entitled to profits lost by reason of the sales of RESET's REPR product. 29. If Plaintiffs are not entitled to profits lost by reason of the infringing sales of RIPR product, then Plaintiffs are, at a minimum, entitled to a reasonable royalty for those sales. 30. Plaintiffs have no adequate remedy at law for RESET's ongoing infringement of the Hines Patent. Plaintiffs will continue to be irreparably harmed by RESET's infringement of the Hines Patent unless RESET's infringing activities are preliminarily and permanently enjoined by the Court. Plaintiffs therefore are entitled to a preliminary and permanent injunction of the marketing and sale of RIPR by RESET and its teaming partner organizations. WHEREFORE, Plaintiffs request that the Court enter judgment: (a finding that Defendant RESET has infringed and is infringing the Hines Patent in
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 7 of 8 violation of35u.s.c. 271; (b (c finding that Defendant RESET's infringement has been and is willful; preliminarily and permanently enjoining Defendant RESET, its officers, agents, servants, employees, attorneys, all parent and subsidiary corporations, its assigns and successors in interest, and those persons acting in concert or participation with it including, but not limited to, distributors, customers, and teaming partner organizations, pursuant to 35 U.S.C. 283, from: (1 further infringement of the Hines Patent; (2 directly or indirectly making, using, selling, or offering to sell any product including, but not limited to, RIPR, that embodies the invention claimed in one or more of the claims of the Hines Patent; and (3 attempting, causing, or assisting any of the above-described acts; (d ordering Defendant RESET to provide an accounting of, and pay Plaintiffs for, their damages, pursuant to 35 U.S.C. 284, in an amount to be determined at trial; (e ordering Defendant RESET to pay pre-judgment interest to Plaintiffs on all amounts awarded, and to pay post-judgment interest at the maximum lawful rate; (f finding that this action is exceptional under 35 U.S.C. 285 and ordering Defendant RESET to pay Plaintiffs their reasonable attorneys' fees thereunder; (g ordering Defendant RESET to pay Plaintiffs' costs of suit pursuant to 35 U.S.C. 284; (h awarding treble damages against Defendant RESET in accordance with 35 U.S.C. 284; (i retaining jurisdiction of this action for the purpose of enabling Plaintiffs to apply to the Court at any time for such further orders and interpretation or execution of that order
Case 2:11-cv-00196-RAJ -FBS Document 1 Filed 04/05/11 Page 8 of 8 entered in this action; for the modification of any such order; for the enforcement or compliance therewith; and for the punishment of any violations thereof; and (j awarding Plaintiffs such other and further relief as the Court may deem just and proper. JURY TRIAL DEMAND Plaintiffs demand a trial by jury on all issues so triable. Respectfully submitted, Benjamin G. Chew, Esq. (VSB#29113 PATTON BOGGS LLP 2550 M Street, N.W. Washington, DC 20037 Telephone: (202 457-6000 Facsimile: (202457-6315 E-mail: bchew(5,pattonboggs.com Counsel for Plaintiff's Prototype Productions, Inc., and Prototype Productions Incorporated Ventures Two, LLC Dated: April 5,2011