10-cv-00885-1
Content
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 1 of 11
IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION
§ § Plaintiff, § § vs. § § EDGE PRODUCTS LLC, SUPERCHIPS, § INC., and GRANATELLI MOTOR SPORTS, § INC., § § Defendants. §
JOHN B. ADRAIN,
Case No. JURY TRIAL DEMANDED
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT AND BREACH OF CONTRACT
Plaintiff John B. Adrain (“Adrain”) brings this action against defendants Edge Products LLC (“Edge”), Superchips, Inc. (“Superchips”), and Granatelli Motor Sports, Inc. (“Granatelli”) and alleges: THE PARTIES 1. Adrain is the inventor of and owns the entire right, title, and interest in the patent at
issue in this case. 2. On information and belief, Edge is a limited liability company organized and existing
under the laws of the state of Delaware, having a principal place of business at 1080 South Depot Drive, Ogden, Utah 84404. Edge has designated its registered agent for purposes of service of process as Reed L. Neubert, Registered Agent, 1080 South Depot Drive, Ogden, Utah 84404. Edge is doing business in this judicial district.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -1-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 2 of 11
3.
On information and belief, Superchips is a corporation organized and existing under
the laws of the state of Florida, having a principal place of business at 1790 East Airport Boulevard, Sanford, Florida 32773. Superchips has designated its registered agent for purposes of service of process as Debra Roth, Registered Agent, 1790 East Airport Boulevard, Sanford, Florida 32773. Superchips is doing business in this judicial district. 4. On information and belief, Granatelli is a corporation organized and existing under
the laws of the state of California, having a principal place of business at 1000 Yarnell Place, Oxnard, California 93033. Granatelli has designated its registered agent for purposes of service of process as J. R. Granatelli, Registered Agent, 1000 Yarnell Place, Oxnard, California 93033. Granatelli is doing business in this judicial district. JURISDICTION AND VENUE 5. This is an action for patent infringement arising under the provisions of the Patent
Laws of the United States of America, Title 35, United States Code, for a declaratory judgment of ownership of the patent-in-suit pursuant to the Federal Declaratory Judgment Act, under Title 28, United States Code, and for breach of contract. 6. Subject-matter jurisdiction over Adrain’s claims are conferred upon this Court by 28
U.S.C. §§ 1331, 1338(a), 1367, 2201, and 2202. 7. On information and belief, subject-matter jurisdiction over Adrain’s contractual
claims against Granatelli is further conferred upon this Court by 28. U.S.C. § 1332 as Adrain is a citizen of the state of Washington and Granatelli is a citizen of the state of California and the matter in controversy exceeds the sum of $75,000, exclusive of interest and costs. 8. On information and belief, Defendants have solicited business in the state of Texas,
transacted business within the state of Texas, and attempted to derive financial benefit from residents
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -2-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 3 of 11
of the state of Texas, including benefits directly related to the instant patent infringement cause of action set forth herein. 9. On information and belief, Defendants have each made, used, sold, offered for sale
and/or imported vehicle performance-tuning devices and/or systems, and/or have each placed vehicle performance-tuning devices and/or system into the stream of commerce, which devices and/or systems have been made, offered for sale, sold, and/or used in the Southern District of Texas. This Court therefore has personal jurisdiction over each Defendant. 10. On information and belief, infringing activities are occurring in this judicial district in
connection with the offering for sale, sale and use of Defendants’ infringing products. 11. 1400(b). 12. Further, venue is proper in this Court, as the Agreement upon which Adrain’s claims Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and (c) and
against Granatelli is partly based contains a forum-selection clause that provides as follows: “12.01 … Each PARTY consents for itself and its successors and assigns and unconditionally and irrevocably submits to the exclusive jurisdiction of the Southern District of Texas sitting in Harris County and any appellate court from any thereof, for the resolution of any claim or dispute which may arise or result from, or be connected with this AGREEMENT.” (Exhibit A). BACKGROUND FACTS 13. On June 4, 1996, U.S. Patent No. 5,523,948 (“the ‘948 patent”), entitled “Apparatus
and Method for Modifying Control of an Originally Manufactured Engine Control Module,” a copy of which is attached hereto as Exhibit B, was duly and legally issued to its sole inventor, John B. Adrain. Adrain owns all right, title and interest in the ‘948 patent, including the right to sue for and recover all past, present and future damages for infringement of the ‘948 patent.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -3-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 4 of 11
14.
The ‘948 patent pertains to a “programmer” (sometimes also called a “tuner”) that
alters the performance of a vehicle by modifying the vehicle’s controlling computer program in the vehicle’s “electronic control module” (“ECM”). 15. The ‘948 patent issued from a “continuation in part” of a patent application that
issued as U.S. Patent No. 5,446,665 (“the ‘665 patent”), which issued from a continuation of an application that issued as U.S. Patent No. 5,293,317 (“the ‘317 patent”), which issued from a continuation of an application that issued as U.S. Patent No. 5,200,900 (“the ‘900 patent”). John Adrain and John Von Colln were listed as joint inventors of the ‘665, ‘317 and ‘900 patents. Von Colln assigned any interest in he had or might have had in any patents related to this technology to John Adrain. 16. Prior to filing the patent application that issued as the ‘948 patent, Von Colln
disclaimed any part in inventing anything disclosed or claimed in the application that issued as the ‘948 patent. 17. On October 22, 2004, Adrain filed suit as the sole plaintiff asserting infringement of
the ‘948 patent against certain defendants, including Edge and Superchips, through their manufacture, use and sale of hand-held programmers that altered the vehicle’s program in its ECM. The devices accused of infringement in that case did not remain connected to the vehicle once the vehicle’s ECM program was modified (referred to herein as the “old programmers”). In other words, after changes were made to the vehicle’s program, the programmer was removed from the vehicle. This previous lawsuit (“the Houston Action”), was filed in the Southern District of Texas, Houston Division, case no. H-04-4117and heard by Judge Keith P. Ellison. 18. On March 14, 2006, the District Court in the Houston Action issued a Memorandum
and Order, and Final Judgment, in which the Court construed certain claims, held claims 1 and 5 of
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -4-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 5 of 11
the ‘948 patent were not infringed because the “programmers” did not remain attached to the vehicle and that claim 19 of the ‘948 patent was invalid. (Exhibit C). 19. On April 11, 2006, Adrain filed his notice of appeal to the Federal Circuit. The
Federal Circuit affirmed the District Court’s decision. The Federal Circuit’s decision, Adrain v. Superchips et al., 218 Fed.Appx. 982 (Fed. Cir. 2007), is attached as Exhibit D. 20. On information and belief, subsequent to the District Court’s judgment in the
Houston Litigation, Edge and Superchips began to distribute programmers that remain attached to the vehicle during use and provide real time data related to the vehicle’s operation and/or the vehicle’s engine, such as the Edge Evolution and Superchips Cortex (referred to herein as the “new programmers”). 21. On information and belief, the Defendants manufactured and sold, and continue to
sell, the new programmers despite having knowledge of the ‘948 patent and the District Court’s claim construction. 22. On information and belief, despite prevailing at the District Court, and during the
pendency of Adrain’s appeal, Edge concocted a scheme to cover its nefarious acts related to the new programmer by purporting to take an assignment of ownership of the ‘948 patent from Von Colln. This purported assignment (“the Purported Assignment”), dated July 19, 2006, is attached as Exhibit E. 23. At no time, including when Von Colln purported to assign ownership of the ‘948
patent to Edge, did Von Colln have any ownership interest in the ‘948 patent 24. On information and belief, at the time of the Purported Assignment, Edge knew or
should have known that Von Colln had no ownership interest in the ‘948 patent. 25. The Purported Assignment is invalid.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -5-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 6 of 11
26. 27.
Edge has no ownership interest or any other legal interest in the ‘948 patent. On or around July 6, 2005, Adrain entered into a licensing agreement, titled “Non-
Exclusive Limited Patent License Agreement” (the “Granatelli License Agreement”) with Granatelli. A true and correct copy of the Granatelli License Agreement is attached as Exhibit A. 28. Pursuant to the terms of the Granatelli License Agreement, Adrain granted to
Granatelli a non-exclusive license to “make, have made (which means providing authorization to other parties to make), use, and sell” products covered by the ‘948 patent (the “Granatelli Licensed Products”). 29. Pursuant to the terms of the Granatelli License Agreement, Granatelli was to pay
royalties of 5% of the net sales of the Granatelli Licensed Products. The Granatelli License Agreement further provided that Granatelli must pay: “a penalty of ten percent (10%) of any royalty due for that calendar quarter that is not timely paid as provided in Section [of the Granatelli License Agreement], plus interest at twelve percent (12%) per annum from the date the payment is due to the date of actual payment.” 30. Granatelli has made and continues to make programmers covered by the ‘948 patent
that remain attached to the vehicle during use and provide real time data related to the vehicle’s operation and/or the vehicle’s engine, such as the engine RPM, the engine temperature, the throttle percentage, and the manifold pressure. 31. Granatelli has made no payments of royalties or interest thereon to Adrain, as
required of it by the Granatelli License Agreement. 32. Adrain made demand upon Granatelli for payment of royalties under the terms of the
Granatelli License Agreement, but Granatelli has refused to make such payment in breach of the Granatelli License Agreement.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -6-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 7 of 11
33.
Pursuant to the Granatelli License Agreement, Adrain terminated the Agreement on
March 16, 2010. FIRST CLAIM FOR RELIEF (PATENT INFRINGEMENT) 34. stated herein. 35. On information and belief, Defendants, either alone or in conjunction and jointly with Adrain repeats and realleges the allegations of paragraphs 1-33 above as though fully
others, have in the past and continue to infringe, contribute to infringement, and/or induce infringement of the ‘948 patent by making, using, selling, offering to sell and/or importing, and/or causing others to use, sell and offer to sell, in this judicial district and/or elsewhere in the United States, vehicle performance-tuning devices and/or systems that remain connected to a vehicle and that are covered by one or more of the claims of the ‘948 patent, including the Edge Evolution, Superchips Cortex, and Granatelli Big G Flash Tuner products. 36. 271. 37. Despite Edge’s, Superchips’s, and Granatelli’s previous knowledge of the ‘948 Defendants are each liable for infringement of the ‘948 patent pursuant to 35 U.S.C. §
patent, as described in paragraphs 13-36, Defendants Edge, Superchips, and Granatelli manufactured and/or modified their products such that they infringe the ‘948 patent. Defendants Edge’s, Superchips’s, and Granatelli’s actions and infringement of the ‘948 patent have therefore been with notice and knowledge of the patent and have been willful and deliberate. 38. Defendants’ acts of infringement have caused damage to Adrain, and Adrain is
entitled to recover from Defendants the damages sustained by Adrain as a result of the Defendants’ wrongful acts in an amount subject to proof at trial.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -7-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 8 of 11
SECOND CLAIM FOR RELIEF (DECLARATORY JUDGMENT OF PATENT OWNERSHIP) 39. stated herein. 40. Adrain is the owner of all rights in and to the ‘948 patent. Despite Von Colln Adrain repeats and realleges the allegations of paragraphs 1-38 above as though fully
disclaiming any role in inventing the subject matter of the invention in the application leading to the ‘948 patent, Edge improperly created and cast a cloud on Adrain’s ownership of the ‘948 patent by attempting to assert ownership rights in the ‘948 patent, as evidenced by the Purported Assignment that Edge recorded in the United States Patent and Trademark Office at Reel 018099/Frame 0400. Von Colln had no rights to the inventions in the application leading to the ‘948 patent. Von Colln’s Purported Assignment to Edge conveyed no ownership interest in the ‘948 patent and is invalid. Based on the actions of Edge, a justiciable actual controversy exists between Adrain and Edge regarding the ownership of the ‘948 patent. 41. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Adrain
is entitled to a declaration that he is and always has been the exclusive owner of all interest, right, and title to and in the ’948 patent, that Edge does not have, nor has it ever had, any ownership interest in the ‘948 patent, and that the Purported Assignment is and always has been void ab initio. THIRD CLAIM FOR RELIEF (BREACH OF CONTRACT) 42. stated herein. 43. Adrain is a party to the Granatelli License Agreement, is entitled to enforce the Adrain repeats and realleges the allegations of paragraphs 1-38 above as though fully
Granatelli License Agreement, and is the proper party to sue for breach of the Granatelli License Agreement.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -8-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 9 of 11
44.
The Granatelli License Agreement is a valid contract that is legally enforceable and
binding upon Granatelli. 45. 46. Adrain fully performed all his obligations under the Granatelli License Agreement. Granatelli has breached the Granatelli License Agreement by failing to make payment
of royalties or the interest thereon to Adrain, following demand by Adrain. Granatelli has made no effort to cure its breach pursuant to the terms of the Granatelli License Agreement. 47. Granatelli’s failure to satisfy its obligations under the Granatelli License Agreement
is not justified nor excused for any reason. 48. Granatelli’s breach of the Granatelli License Agreement has required Adrain to retain
the undersigned counsel to enforce his rights under the Granatelli License Agreement. Although Adrain has made demand upon Granatelli in accordance with Chapter 38 of the Texas Civil Practice & Remedies Code, Granatelli has continued to refuse to perform its contractual obligations under the Granatelli License Agreement. Accordingly, Adrain is entitled to recover all reasonably attorneys’ fees and Court costs pursuant to Texas Civil Practice and Remedies Code § 38.001. 49. Presentment of Adrain’s claim has been made and all conditions precedent to
Adrain’s right to recover against Granatelli have occurred or have been performed or excused. PRAYER FOR RELIEF WHEREFORE, Adrain prays for entry of judgment that: A. Defendants have infringed, contributed to infringement of, and/or induced
infringement of the ‘948 patent; B. Defendants Edge’s, Superchips’s, and Granatelli’s infringement, contributory
infringement and/or induced infringement of the ‘948 patent have been willful and deliberate;
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -9-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 10 of 11
C.
Defendants account for and pay to Adrain all damages caused by their respective
infringement of the ‘948 patent; D. The Court increase the amount of damages as a result of the Defendants’
infringement to three times the amount found or assessed by the Court because of the willful and deliberate nature of the infringement, all in accordance with 35 U.S.C. § 284; E. That the Court enter a declaratory judgment declaring that Adrain is the exclusive
owner of all right, title, and interest in and to the ‘948 patent; F. Granatelli account for and pay to Adrain all damages, including unpaid interest,
caused by its breach of the Granatelli License Agreement. G. Adrain be granted pre-judgment and post-judgment interest on the damages caused to
it by reason of one or more of Defendants’ actions; H. The Court declare this an exceptional case and that Adrain be granted his reasonable
attorneys’ fees in accordance with 35 U.S.C. § 285 and Chapter 38 of the Texas Civil Practice & Remedies Code; I. J. Costs be awarded to Adrain; and, Adrain be granted such other and further relief as the Court may deem just and
proper under the circumstances. DEMAND FOR JURY TRIAL Adrain demands trial by jury on all claims and issues so triable.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -10-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 11 of 11
Respectfully submitted, Dated: March 17, 2010 By: /s/ John T. Polasek John T. Polasek Texas Bar. No. 16088590 [email protected] C. Dale Quisenberry Texas Bar No. 24005040 [email protected] Jeffrey S. David Texas Bar No. 24053171 [email protected] POLASEK, QUISENBERRY & ERRINGTON, L.L.P. 6750 West Loop South, Suite 920 Bellaire, Texas 77401 Telephone: (832) 778-6000 Facsimile: (832) 778-6010 Attorneys for Plaintiff
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -11-
OJS 44 (Rev. 12/07)
Case 4:10-cv-00885 Document 1-1
Filed in TXSD CIVIL COVER SHEET on 03/17/10 Page 1 of 2
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS JOHN B. ADRAIN (b) County of Residence of First Listed Plaintiff
(EXCEPT IN U.S. PLAINTIFF CASES)
DEFENDANTS
EDGE PRODUCTS LLC, SUPERCHIPS, INC., and GRANATELLI MOTOR SPORTS, INC.
County of Residence of First Listed Defendant
(IN U.S. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE LAND INVOLVED.
(c) Attorney’s (Firm Name, Address, and Telephone Number)
Attorneys (If Known)
John T. Polasek, Polasek, Quisenberry & Errington, LLP 6750 West Loop South,Ste. 920, Bellaire,TX 77401 (832)778-6000 II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X” in One Box for Plaintiff
’ 1
U.S. Government Plaintiff
’ 3 Federal Question (U.S. Government Not a Party) ’ 4 Diversity
(Indicate Citizenship of Parties in Item III)
(For Diversity Cases Only) PTF Citizen of This State ’ 1
DEF ’ 1
and One Box for Defendant) PTF DEF Incorporated or Principal Place ’ 4 ’ 4 of Business In This State Incorporated and Principal Place of Business In Another State Foreign Nation
’ 2
U.S. Government Defendant
Citizen of Another State
’ 2 ’ 3
’ ’
2
’ 5 ’ 6
’ 5 ’ 6
Citizen or Subject of a Foreign Country
3
IV. NATURE OF SUIT
CONTRACT
(Place an “X” in One Box Only) TORTS PERSONAL INJURY 310 Airplane 315 Airplane Product Liability 320 Assault, Libel & Slander 330 Federal Employers’ Liability 340 Marine 345 Marine Product Liability 350 Motor Vehicle 355 Motor Vehicle Product Liability 360 Other Personal Injury CIVIL RIGHTS 441 Voting 442 Employment 443 Housing/ Accommodations 444 Welfare 445 Amer. w/Disabilities Employment 446 Amer. w/Disabilities Other 440 Other Civil Rights PERSONAL INJURY ’ 362 Personal Injury Med. Malpractice ’ 365 Personal Injury Product Liability ’ 368 Asbestos Personal Injury Product Liability PERSONAL PROPERTY ’ 370 Other Fraud ’ 371 Truth in Lending ’ 380 Other Personal Property Damage ’ 385 Property Damage Product Liability PRISONER PETITIONS ’ 510 Motions to Vacate Sentence Habeas Corpus: ’ 530 General ’ 535 Death Penalty ’ 540 Mandamus & Other ’ 550 Civil Rights ’ 555 Prison Condition
FORFEITURE/PENALTY
BANKRUPTCY
OTHER STATUTES
’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’
110 Insurance 120 Marine 130 Miller Act 140 Negotiable Instrument 150 Recovery of Overpayment & Enforcement of Judgment 151 Medicare Act 152 Recovery of Defaulted Student Loans (Excl. Veterans) 153 Recovery of Overpayment of Veteran’s Benefits 160 Stockholders’ Suits 190 Other Contract 195 Contract Product Liability 196 Franchise REAL PROPERTY 210 Land Condemnation 220 Foreclosure 230 Rent Lease & Ejectment 240 Torts to Land 245 Tort Product Liability 290 All Other Real Property
’ ’ ’ ’ ’ ’ ’ ’ ’
’ ’ ’ ’ ’ ’ ’
’ 610 Agriculture ’ 620 Other Food & Drug ’ 625 Drug Related Seizure of Property 21 USC 881 ’ 630 Liquor Laws ’ 640 R.R. & Truck ’ 650 Airline Regs. ’ 660 Occupational Safety/Health ’ 690 Other LABOR ’ 710 Fair Labor Standards Act ’ 720 Labor/Mgmt. Relations ’ 730 Labor/Mgmt.Reporting & Disclosure Act ’ 740 Railway Labor Act ’ 790 Other Labor Litigation ’ 791 Empl. Ret. Inc. Security Act
IMMIGRATION ’ 462 Naturalization Application ’ 463 Habeas Corpus Alien Detainee ’ 465 Other Immigration Actions
’ 422 Appeal 28 USC 158 ’ 423 Withdrawal 28 USC 157
PROPERTY RIGHTS ’ 820 Copyrights ’ 830 Patent ’ 840 Trademark
’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’
SOCIAL SECURITY 861 HIA (1395ff) 862 Black Lung (923) 863 DIWC/DIWW (405(g)) 864 SSID Title XVI 865 RSI (405(g)) FEDERAL TAX SUITS ’ 870 Taxes (U.S. Plaintiff or Defendant) ’ 871 IRS—Third Party 26 USC 7609
’ ’ ’ ’ ’
400 State Reapportionment 410 Antitrust 430 Banks and Banking 450 Commerce 460 Deportation 470 Racketeer Influenced and Corrupt Organizations 480 Consumer Credit 490 Cable/Sat TV 810 Selective Service 850 Securities/Commodities/ Exchange 875 Customer Challenge 12 USC 3410 890 Other Statutory Actions 891 Agricultural Acts 892 Economic Stabilization Act 893 Environmental Matters 894 Energy Allocation Act 895 Freedom of Information Act 900Appeal of Fee Determination Under Equal Access to Justice 950 Constitutionality of State Statutes
V. ORIGIN
’ 1 Original Proceeding
(Place an “X” in One Box Only)
Appeal to District Appellate Court
’ 2 Removed from
State Court
’ 3 Remanded from
’ 4 Reinstated or ’ 5 Transferred from ’ 6 Multidistrict another district Reopened Litigation (specify)
’ 7 Judge from Magistrate
Judgment
35 U.S. § 271 VI. CAUSE OF ACTION Brief description of cause: Patent Infringement, Declaratory Judgment and breach of contract CHECK YES only if demanded in complaint: DEMAND $ ’ CHECK IF THIS IS A CLASS ACTION VII. REQUESTED IN UNDER F.R.C.P. 23 ’ Yes ’ No JURY DEMAND: COMPLAINT: VIII. RELATED CASE(S) (See instructions): JUDGE DOCKET NUMBER IF ANY
DATE SIGNATURE OF ATTORNEY OF RECORD
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
03/17/2010
FOR OFFICE USE ONLY RECEIPT # AMOUNT
/s/ John T. Polasek
APPLYING IFP
JUDGE
MAG. JUDGE
Print
Save As...
Export as FDF
Retrieve FDF File
Reset
JS 44 Reverse (Rev. 12/07)
Case 4:10-cv-00885 Document 1-1
Filed in TXSD on 03/17/10 Page 2 of 2
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint filed. The attorney filing a case should complete the form as follows: I. (a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving both name and title. (b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases, the county of residence of the “defendant” is the location of the tract of land involved.) (c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting in this section “(see attachment)”. II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an “X” in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below. United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here. United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box. Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box 1 or 2 should be marked. Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.) III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section for each principal party. IV. Nature of Suit. Place an “X” in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is sufficient to enable the deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of suit, select the most definitive. V. Origin. Place an “X” in one of the seven boxes. Original Proceedings. (1) Cases which originate in the United States district courts. Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition for removal is granted, check this box. Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date. Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date. Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict litigation transfers. Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this box is checked, do not check (5) above. Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge’s decision. VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service VII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Rule 23, F.R.Cv.P. Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction. Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded. VIII. Related Cases. This section of the JS 44 is used to reference related pending cases if any. If there are related pending cases, insert the docket numbers and the corresponding judge names for such cases. Date and Attorney Signature. Date and sign the civil cover sheet.
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 1 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 2 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 3 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 4 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 5 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 6 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 7 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 8 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 9 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 10 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 11 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 12 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 13 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 14 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 15 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 16 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 17 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 18 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 19 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 20 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 21 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 22 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 23 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 24 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 25 of 25
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 1 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 2 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 3 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 4 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 5 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 6 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 7 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 8 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 9 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 10 of 10
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 1 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 2 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 3 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 4 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 5 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 6 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 7 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 8 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 9 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 10 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 11 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 12 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 13 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 14 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 15 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 16 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 17 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 18 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 19 of 19
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 1 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 2 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 3 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 4 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 5 of 5
Case 4:10-cv-00885 Document 1-6
Filed in TXSD on 03/17/10 Page 1 of 3
Case 4:10-cv-00885 Document 1-6
Filed in TXSD on 03/17/10 Page 2 of 3
Case 4:10-cv-00885 Document 1-6
Filed in TXSD on 03/17/10 Page 3 of 3
Filed in TXSD on 03/17/10 Page 1 of 11
IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION
§ § Plaintiff, § § vs. § § EDGE PRODUCTS LLC, SUPERCHIPS, § INC., and GRANATELLI MOTOR SPORTS, § INC., § § Defendants. §
JOHN B. ADRAIN,
Case No. JURY TRIAL DEMANDED
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT AND BREACH OF CONTRACT
Plaintiff John B. Adrain (“Adrain”) brings this action against defendants Edge Products LLC (“Edge”), Superchips, Inc. (“Superchips”), and Granatelli Motor Sports, Inc. (“Granatelli”) and alleges: THE PARTIES 1. Adrain is the inventor of and owns the entire right, title, and interest in the patent at
issue in this case. 2. On information and belief, Edge is a limited liability company organized and existing
under the laws of the state of Delaware, having a principal place of business at 1080 South Depot Drive, Ogden, Utah 84404. Edge has designated its registered agent for purposes of service of process as Reed L. Neubert, Registered Agent, 1080 South Depot Drive, Ogden, Utah 84404. Edge is doing business in this judicial district.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -1-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 2 of 11
3.
On information and belief, Superchips is a corporation organized and existing under
the laws of the state of Florida, having a principal place of business at 1790 East Airport Boulevard, Sanford, Florida 32773. Superchips has designated its registered agent for purposes of service of process as Debra Roth, Registered Agent, 1790 East Airport Boulevard, Sanford, Florida 32773. Superchips is doing business in this judicial district. 4. On information and belief, Granatelli is a corporation organized and existing under
the laws of the state of California, having a principal place of business at 1000 Yarnell Place, Oxnard, California 93033. Granatelli has designated its registered agent for purposes of service of process as J. R. Granatelli, Registered Agent, 1000 Yarnell Place, Oxnard, California 93033. Granatelli is doing business in this judicial district. JURISDICTION AND VENUE 5. This is an action for patent infringement arising under the provisions of the Patent
Laws of the United States of America, Title 35, United States Code, for a declaratory judgment of ownership of the patent-in-suit pursuant to the Federal Declaratory Judgment Act, under Title 28, United States Code, and for breach of contract. 6. Subject-matter jurisdiction over Adrain’s claims are conferred upon this Court by 28
U.S.C. §§ 1331, 1338(a), 1367, 2201, and 2202. 7. On information and belief, subject-matter jurisdiction over Adrain’s contractual
claims against Granatelli is further conferred upon this Court by 28. U.S.C. § 1332 as Adrain is a citizen of the state of Washington and Granatelli is a citizen of the state of California and the matter in controversy exceeds the sum of $75,000, exclusive of interest and costs. 8. On information and belief, Defendants have solicited business in the state of Texas,
transacted business within the state of Texas, and attempted to derive financial benefit from residents
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -2-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 3 of 11
of the state of Texas, including benefits directly related to the instant patent infringement cause of action set forth herein. 9. On information and belief, Defendants have each made, used, sold, offered for sale
and/or imported vehicle performance-tuning devices and/or systems, and/or have each placed vehicle performance-tuning devices and/or system into the stream of commerce, which devices and/or systems have been made, offered for sale, sold, and/or used in the Southern District of Texas. This Court therefore has personal jurisdiction over each Defendant. 10. On information and belief, infringing activities are occurring in this judicial district in
connection with the offering for sale, sale and use of Defendants’ infringing products. 11. 1400(b). 12. Further, venue is proper in this Court, as the Agreement upon which Adrain’s claims Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and (c) and
against Granatelli is partly based contains a forum-selection clause that provides as follows: “12.01 … Each PARTY consents for itself and its successors and assigns and unconditionally and irrevocably submits to the exclusive jurisdiction of the Southern District of Texas sitting in Harris County and any appellate court from any thereof, for the resolution of any claim or dispute which may arise or result from, or be connected with this AGREEMENT.” (Exhibit A). BACKGROUND FACTS 13. On June 4, 1996, U.S. Patent No. 5,523,948 (“the ‘948 patent”), entitled “Apparatus
and Method for Modifying Control of an Originally Manufactured Engine Control Module,” a copy of which is attached hereto as Exhibit B, was duly and legally issued to its sole inventor, John B. Adrain. Adrain owns all right, title and interest in the ‘948 patent, including the right to sue for and recover all past, present and future damages for infringement of the ‘948 patent.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -3-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 4 of 11
14.
The ‘948 patent pertains to a “programmer” (sometimes also called a “tuner”) that
alters the performance of a vehicle by modifying the vehicle’s controlling computer program in the vehicle’s “electronic control module” (“ECM”). 15. The ‘948 patent issued from a “continuation in part” of a patent application that
issued as U.S. Patent No. 5,446,665 (“the ‘665 patent”), which issued from a continuation of an application that issued as U.S. Patent No. 5,293,317 (“the ‘317 patent”), which issued from a continuation of an application that issued as U.S. Patent No. 5,200,900 (“the ‘900 patent”). John Adrain and John Von Colln were listed as joint inventors of the ‘665, ‘317 and ‘900 patents. Von Colln assigned any interest in he had or might have had in any patents related to this technology to John Adrain. 16. Prior to filing the patent application that issued as the ‘948 patent, Von Colln
disclaimed any part in inventing anything disclosed or claimed in the application that issued as the ‘948 patent. 17. On October 22, 2004, Adrain filed suit as the sole plaintiff asserting infringement of
the ‘948 patent against certain defendants, including Edge and Superchips, through their manufacture, use and sale of hand-held programmers that altered the vehicle’s program in its ECM. The devices accused of infringement in that case did not remain connected to the vehicle once the vehicle’s ECM program was modified (referred to herein as the “old programmers”). In other words, after changes were made to the vehicle’s program, the programmer was removed from the vehicle. This previous lawsuit (“the Houston Action”), was filed in the Southern District of Texas, Houston Division, case no. H-04-4117and heard by Judge Keith P. Ellison. 18. On March 14, 2006, the District Court in the Houston Action issued a Memorandum
and Order, and Final Judgment, in which the Court construed certain claims, held claims 1 and 5 of
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -4-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 5 of 11
the ‘948 patent were not infringed because the “programmers” did not remain attached to the vehicle and that claim 19 of the ‘948 patent was invalid. (Exhibit C). 19. On April 11, 2006, Adrain filed his notice of appeal to the Federal Circuit. The
Federal Circuit affirmed the District Court’s decision. The Federal Circuit’s decision, Adrain v. Superchips et al., 218 Fed.Appx. 982 (Fed. Cir. 2007), is attached as Exhibit D. 20. On information and belief, subsequent to the District Court’s judgment in the
Houston Litigation, Edge and Superchips began to distribute programmers that remain attached to the vehicle during use and provide real time data related to the vehicle’s operation and/or the vehicle’s engine, such as the Edge Evolution and Superchips Cortex (referred to herein as the “new programmers”). 21. On information and belief, the Defendants manufactured and sold, and continue to
sell, the new programmers despite having knowledge of the ‘948 patent and the District Court’s claim construction. 22. On information and belief, despite prevailing at the District Court, and during the
pendency of Adrain’s appeal, Edge concocted a scheme to cover its nefarious acts related to the new programmer by purporting to take an assignment of ownership of the ‘948 patent from Von Colln. This purported assignment (“the Purported Assignment”), dated July 19, 2006, is attached as Exhibit E. 23. At no time, including when Von Colln purported to assign ownership of the ‘948
patent to Edge, did Von Colln have any ownership interest in the ‘948 patent 24. On information and belief, at the time of the Purported Assignment, Edge knew or
should have known that Von Colln had no ownership interest in the ‘948 patent. 25. The Purported Assignment is invalid.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -5-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 6 of 11
26. 27.
Edge has no ownership interest or any other legal interest in the ‘948 patent. On or around July 6, 2005, Adrain entered into a licensing agreement, titled “Non-
Exclusive Limited Patent License Agreement” (the “Granatelli License Agreement”) with Granatelli. A true and correct copy of the Granatelli License Agreement is attached as Exhibit A. 28. Pursuant to the terms of the Granatelli License Agreement, Adrain granted to
Granatelli a non-exclusive license to “make, have made (which means providing authorization to other parties to make), use, and sell” products covered by the ‘948 patent (the “Granatelli Licensed Products”). 29. Pursuant to the terms of the Granatelli License Agreement, Granatelli was to pay
royalties of 5% of the net sales of the Granatelli Licensed Products. The Granatelli License Agreement further provided that Granatelli must pay: “a penalty of ten percent (10%) of any royalty due for that calendar quarter that is not timely paid as provided in Section [of the Granatelli License Agreement], plus interest at twelve percent (12%) per annum from the date the payment is due to the date of actual payment.” 30. Granatelli has made and continues to make programmers covered by the ‘948 patent
that remain attached to the vehicle during use and provide real time data related to the vehicle’s operation and/or the vehicle’s engine, such as the engine RPM, the engine temperature, the throttle percentage, and the manifold pressure. 31. Granatelli has made no payments of royalties or interest thereon to Adrain, as
required of it by the Granatelli License Agreement. 32. Adrain made demand upon Granatelli for payment of royalties under the terms of the
Granatelli License Agreement, but Granatelli has refused to make such payment in breach of the Granatelli License Agreement.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -6-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 7 of 11
33.
Pursuant to the Granatelli License Agreement, Adrain terminated the Agreement on
March 16, 2010. FIRST CLAIM FOR RELIEF (PATENT INFRINGEMENT) 34. stated herein. 35. On information and belief, Defendants, either alone or in conjunction and jointly with Adrain repeats and realleges the allegations of paragraphs 1-33 above as though fully
others, have in the past and continue to infringe, contribute to infringement, and/or induce infringement of the ‘948 patent by making, using, selling, offering to sell and/or importing, and/or causing others to use, sell and offer to sell, in this judicial district and/or elsewhere in the United States, vehicle performance-tuning devices and/or systems that remain connected to a vehicle and that are covered by one or more of the claims of the ‘948 patent, including the Edge Evolution, Superchips Cortex, and Granatelli Big G Flash Tuner products. 36. 271. 37. Despite Edge’s, Superchips’s, and Granatelli’s previous knowledge of the ‘948 Defendants are each liable for infringement of the ‘948 patent pursuant to 35 U.S.C. §
patent, as described in paragraphs 13-36, Defendants Edge, Superchips, and Granatelli manufactured and/or modified their products such that they infringe the ‘948 patent. Defendants Edge’s, Superchips’s, and Granatelli’s actions and infringement of the ‘948 patent have therefore been with notice and knowledge of the patent and have been willful and deliberate. 38. Defendants’ acts of infringement have caused damage to Adrain, and Adrain is
entitled to recover from Defendants the damages sustained by Adrain as a result of the Defendants’ wrongful acts in an amount subject to proof at trial.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -7-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 8 of 11
SECOND CLAIM FOR RELIEF (DECLARATORY JUDGMENT OF PATENT OWNERSHIP) 39. stated herein. 40. Adrain is the owner of all rights in and to the ‘948 patent. Despite Von Colln Adrain repeats and realleges the allegations of paragraphs 1-38 above as though fully
disclaiming any role in inventing the subject matter of the invention in the application leading to the ‘948 patent, Edge improperly created and cast a cloud on Adrain’s ownership of the ‘948 patent by attempting to assert ownership rights in the ‘948 patent, as evidenced by the Purported Assignment that Edge recorded in the United States Patent and Trademark Office at Reel 018099/Frame 0400. Von Colln had no rights to the inventions in the application leading to the ‘948 patent. Von Colln’s Purported Assignment to Edge conveyed no ownership interest in the ‘948 patent and is invalid. Based on the actions of Edge, a justiciable actual controversy exists between Adrain and Edge regarding the ownership of the ‘948 patent. 41. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., Adrain
is entitled to a declaration that he is and always has been the exclusive owner of all interest, right, and title to and in the ’948 patent, that Edge does not have, nor has it ever had, any ownership interest in the ‘948 patent, and that the Purported Assignment is and always has been void ab initio. THIRD CLAIM FOR RELIEF (BREACH OF CONTRACT) 42. stated herein. 43. Adrain is a party to the Granatelli License Agreement, is entitled to enforce the Adrain repeats and realleges the allegations of paragraphs 1-38 above as though fully
Granatelli License Agreement, and is the proper party to sue for breach of the Granatelli License Agreement.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -8-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 9 of 11
44.
The Granatelli License Agreement is a valid contract that is legally enforceable and
binding upon Granatelli. 45. 46. Adrain fully performed all his obligations under the Granatelli License Agreement. Granatelli has breached the Granatelli License Agreement by failing to make payment
of royalties or the interest thereon to Adrain, following demand by Adrain. Granatelli has made no effort to cure its breach pursuant to the terms of the Granatelli License Agreement. 47. Granatelli’s failure to satisfy its obligations under the Granatelli License Agreement
is not justified nor excused for any reason. 48. Granatelli’s breach of the Granatelli License Agreement has required Adrain to retain
the undersigned counsel to enforce his rights under the Granatelli License Agreement. Although Adrain has made demand upon Granatelli in accordance with Chapter 38 of the Texas Civil Practice & Remedies Code, Granatelli has continued to refuse to perform its contractual obligations under the Granatelli License Agreement. Accordingly, Adrain is entitled to recover all reasonably attorneys’ fees and Court costs pursuant to Texas Civil Practice and Remedies Code § 38.001. 49. Presentment of Adrain’s claim has been made and all conditions precedent to
Adrain’s right to recover against Granatelli have occurred or have been performed or excused. PRAYER FOR RELIEF WHEREFORE, Adrain prays for entry of judgment that: A. Defendants have infringed, contributed to infringement of, and/or induced
infringement of the ‘948 patent; B. Defendants Edge’s, Superchips’s, and Granatelli’s infringement, contributory
infringement and/or induced infringement of the ‘948 patent have been willful and deliberate;
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -9-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 10 of 11
C.
Defendants account for and pay to Adrain all damages caused by their respective
infringement of the ‘948 patent; D. The Court increase the amount of damages as a result of the Defendants’
infringement to three times the amount found or assessed by the Court because of the willful and deliberate nature of the infringement, all in accordance with 35 U.S.C. § 284; E. That the Court enter a declaratory judgment declaring that Adrain is the exclusive
owner of all right, title, and interest in and to the ‘948 patent; F. Granatelli account for and pay to Adrain all damages, including unpaid interest,
caused by its breach of the Granatelli License Agreement. G. Adrain be granted pre-judgment and post-judgment interest on the damages caused to
it by reason of one or more of Defendants’ actions; H. The Court declare this an exceptional case and that Adrain be granted his reasonable
attorneys’ fees in accordance with 35 U.S.C. § 285 and Chapter 38 of the Texas Civil Practice & Remedies Code; I. J. Costs be awarded to Adrain; and, Adrain be granted such other and further relief as the Court may deem just and
proper under the circumstances. DEMAND FOR JURY TRIAL Adrain demands trial by jury on all claims and issues so triable.
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -10-
Case 4:10-cv-00885 Document 1
Filed in TXSD on 03/17/10 Page 11 of 11
Respectfully submitted, Dated: March 17, 2010 By: /s/ John T. Polasek John T. Polasek Texas Bar. No. 16088590 [email protected] C. Dale Quisenberry Texas Bar No. 24005040 [email protected] Jeffrey S. David Texas Bar No. 24053171 [email protected] POLASEK, QUISENBERRY & ERRINGTON, L.L.P. 6750 West Loop South, Suite 920 Bellaire, Texas 77401 Telephone: (832) 778-6000 Facsimile: (832) 778-6010 Attorneys for Plaintiff
COMPLAINT FOR PATENT INFRINGEMENT, DECLARATORY JUDGMENT, AND BREACH OF CONTRACT
Page -11-
OJS 44 (Rev. 12/07)
Case 4:10-cv-00885 Document 1-1
Filed in TXSD CIVIL COVER SHEET on 03/17/10 Page 1 of 2
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS JOHN B. ADRAIN (b) County of Residence of First Listed Plaintiff
(EXCEPT IN U.S. PLAINTIFF CASES)
DEFENDANTS
EDGE PRODUCTS LLC, SUPERCHIPS, INC., and GRANATELLI MOTOR SPORTS, INC.
County of Residence of First Listed Defendant
(IN U.S. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE LAND INVOLVED.
(c) Attorney’s (Firm Name, Address, and Telephone Number)
Attorneys (If Known)
John T. Polasek, Polasek, Quisenberry & Errington, LLP 6750 West Loop South,Ste. 920, Bellaire,TX 77401 (832)778-6000 II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X” in One Box for Plaintiff
’ 1
U.S. Government Plaintiff
’ 3 Federal Question (U.S. Government Not a Party) ’ 4 Diversity
(Indicate Citizenship of Parties in Item III)
(For Diversity Cases Only) PTF Citizen of This State ’ 1
DEF ’ 1
and One Box for Defendant) PTF DEF Incorporated or Principal Place ’ 4 ’ 4 of Business In This State Incorporated and Principal Place of Business In Another State Foreign Nation
’ 2
U.S. Government Defendant
Citizen of Another State
’ 2 ’ 3
’ ’
2
’ 5 ’ 6
’ 5 ’ 6
Citizen or Subject of a Foreign Country
3
IV. NATURE OF SUIT
CONTRACT
(Place an “X” in One Box Only) TORTS PERSONAL INJURY 310 Airplane 315 Airplane Product Liability 320 Assault, Libel & Slander 330 Federal Employers’ Liability 340 Marine 345 Marine Product Liability 350 Motor Vehicle 355 Motor Vehicle Product Liability 360 Other Personal Injury CIVIL RIGHTS 441 Voting 442 Employment 443 Housing/ Accommodations 444 Welfare 445 Amer. w/Disabilities Employment 446 Amer. w/Disabilities Other 440 Other Civil Rights PERSONAL INJURY ’ 362 Personal Injury Med. Malpractice ’ 365 Personal Injury Product Liability ’ 368 Asbestos Personal Injury Product Liability PERSONAL PROPERTY ’ 370 Other Fraud ’ 371 Truth in Lending ’ 380 Other Personal Property Damage ’ 385 Property Damage Product Liability PRISONER PETITIONS ’ 510 Motions to Vacate Sentence Habeas Corpus: ’ 530 General ’ 535 Death Penalty ’ 540 Mandamus & Other ’ 550 Civil Rights ’ 555 Prison Condition
FORFEITURE/PENALTY
BANKRUPTCY
OTHER STATUTES
’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’
110 Insurance 120 Marine 130 Miller Act 140 Negotiable Instrument 150 Recovery of Overpayment & Enforcement of Judgment 151 Medicare Act 152 Recovery of Defaulted Student Loans (Excl. Veterans) 153 Recovery of Overpayment of Veteran’s Benefits 160 Stockholders’ Suits 190 Other Contract 195 Contract Product Liability 196 Franchise REAL PROPERTY 210 Land Condemnation 220 Foreclosure 230 Rent Lease & Ejectment 240 Torts to Land 245 Tort Product Liability 290 All Other Real Property
’ ’ ’ ’ ’ ’ ’ ’ ’
’ ’ ’ ’ ’ ’ ’
’ 610 Agriculture ’ 620 Other Food & Drug ’ 625 Drug Related Seizure of Property 21 USC 881 ’ 630 Liquor Laws ’ 640 R.R. & Truck ’ 650 Airline Regs. ’ 660 Occupational Safety/Health ’ 690 Other LABOR ’ 710 Fair Labor Standards Act ’ 720 Labor/Mgmt. Relations ’ 730 Labor/Mgmt.Reporting & Disclosure Act ’ 740 Railway Labor Act ’ 790 Other Labor Litigation ’ 791 Empl. Ret. Inc. Security Act
IMMIGRATION ’ 462 Naturalization Application ’ 463 Habeas Corpus Alien Detainee ’ 465 Other Immigration Actions
’ 422 Appeal 28 USC 158 ’ 423 Withdrawal 28 USC 157
PROPERTY RIGHTS ’ 820 Copyrights ’ 830 Patent ’ 840 Trademark
’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’ ’
SOCIAL SECURITY 861 HIA (1395ff) 862 Black Lung (923) 863 DIWC/DIWW (405(g)) 864 SSID Title XVI 865 RSI (405(g)) FEDERAL TAX SUITS ’ 870 Taxes (U.S. Plaintiff or Defendant) ’ 871 IRS—Third Party 26 USC 7609
’ ’ ’ ’ ’
400 State Reapportionment 410 Antitrust 430 Banks and Banking 450 Commerce 460 Deportation 470 Racketeer Influenced and Corrupt Organizations 480 Consumer Credit 490 Cable/Sat TV 810 Selective Service 850 Securities/Commodities/ Exchange 875 Customer Challenge 12 USC 3410 890 Other Statutory Actions 891 Agricultural Acts 892 Economic Stabilization Act 893 Environmental Matters 894 Energy Allocation Act 895 Freedom of Information Act 900Appeal of Fee Determination Under Equal Access to Justice 950 Constitutionality of State Statutes
V. ORIGIN
’ 1 Original Proceeding
(Place an “X” in One Box Only)
Appeal to District Appellate Court
’ 2 Removed from
State Court
’ 3 Remanded from
’ 4 Reinstated or ’ 5 Transferred from ’ 6 Multidistrict another district Reopened Litigation (specify)
’ 7 Judge from Magistrate
Judgment
35 U.S. § 271 VI. CAUSE OF ACTION Brief description of cause: Patent Infringement, Declaratory Judgment and breach of contract CHECK YES only if demanded in complaint: DEMAND $ ’ CHECK IF THIS IS A CLASS ACTION VII. REQUESTED IN UNDER F.R.C.P. 23 ’ Yes ’ No JURY DEMAND: COMPLAINT: VIII. RELATED CASE(S) (See instructions): JUDGE DOCKET NUMBER IF ANY
DATE SIGNATURE OF ATTORNEY OF RECORD
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
03/17/2010
FOR OFFICE USE ONLY RECEIPT # AMOUNT
/s/ John T. Polasek
APPLYING IFP
JUDGE
MAG. JUDGE
Save As...
Export as FDF
Retrieve FDF File
Reset
JS 44 Reverse (Rev. 12/07)
Case 4:10-cv-00885 Document 1-1
Filed in TXSD on 03/17/10 Page 2 of 2
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint filed. The attorney filing a case should complete the form as follows: I. (a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving both name and title. (b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases, the county of residence of the “defendant” is the location of the tract of land involved.) (c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting in this section “(see attachment)”. II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an “X” in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below. United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here. United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box. Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box 1 or 2 should be marked. Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.) III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section for each principal party. IV. Nature of Suit. Place an “X” in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is sufficient to enable the deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of suit, select the most definitive. V. Origin. Place an “X” in one of the seven boxes. Original Proceedings. (1) Cases which originate in the United States district courts. Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition for removal is granted, check this box. Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date. Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date. Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict litigation transfers. Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this box is checked, do not check (5) above. Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge’s decision. VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service VII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Rule 23, F.R.Cv.P. Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction. Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded. VIII. Related Cases. This section of the JS 44 is used to reference related pending cases if any. If there are related pending cases, insert the docket numbers and the corresponding judge names for such cases. Date and Attorney Signature. Date and sign the civil cover sheet.
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 1 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 2 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 3 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 4 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 5 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 6 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 7 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 8 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 9 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 10 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 11 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 12 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 13 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 14 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 15 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 16 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 17 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 18 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 19 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 20 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 21 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 22 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 23 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 24 of 25
Case 4:10-cv-00885 Document 1-2
Filed in TXSD on 03/17/10 Page 25 of 25
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 1 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 2 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 3 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 4 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 5 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 6 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 7 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 8 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 9 of 10
Case 4:10-cv-00885 Document 1-3
Filed in TXSD on 03/17/10 Page 10 of 10
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 1 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 2 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 3 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 4 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 5 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 6 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 7 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 8 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 9 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 10 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 11 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 12 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 13 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 14 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 15 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 16 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 17 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 18 of 19
Case 4:10-cv-00885 Document 1-4
Filed in TXSD on 03/17/10 Page 19 of 19
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 1 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 2 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 3 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 4 of 5
Case 4:10-cv-00885 Document 1-5
Filed in TXSD on 03/17/10 Page 5 of 5
Case 4:10-cv-00885 Document 1-6
Filed in TXSD on 03/17/10 Page 1 of 3
Case 4:10-cv-00885 Document 1-6
Filed in TXSD on 03/17/10 Page 2 of 3
Case 4:10-cv-00885 Document 1-6
Filed in TXSD on 03/17/10 Page 3 of 3
Sponsor Documents
Recommended
No recommend documents