MMI v. Metal Motorsports - Complaint

Case 2:16-cv-02433-DGC Document 1 Filed 07/20/16 Page 1 of 30
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MICHAEL GERITY, BAR NO. 015750

ISRAEL & GERITY, PLLC
202 EAST EARLL DRIVE, SUITE 440
PHOENIX, ARIZONA 85012
TELEPHONE: (602) 274-4400
FACSIMILE: (602) 274-4401
MGERITY@IG-LAW.COM
ATTORNEYS FOR PLAINTIFF
UNITED STATES DISTRICT COURT
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SUITE
202 East Earll Drive,
PHOENIX, ARIZONA
440
85012
(602) 274-4400 / FAX : (602) 274-4401
ISRAEL & GERITY, P.L.L.C.
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FOR THE DISTRICT OF ARIZONA

MMI, Inc., an Arizona corporation,
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Metal Motorsports, Inc., an Arizona

corporation; The Pep Boys Manny
Moe & Jack of California, a foreign
corporation; Recon Enterprise, LLC,
an Arizona limited liability company;
John and Jane Does 1-97, and Black
and White Companies 1-97,
AND
DEMAND FOR JURY TRIAL
Defendants.
Plaintiff MMI, Inc. (hereinafter Plaintiff), for its Complaint against the
Defendants, alleges as follows:
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COMPLAINT FOR PATENT

INFRINGEMENT
v.
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No.
Plaintiff,
THE PARTIES
1.
Plaintiff MMI, Inc., (hereinafter MMI) is a corporation organized and
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existing under the laws of the State of Arizona, with its principal place of business at
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8512 East Jenan in Scottsdale, Arizona.
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2.
At all times relevant, Metal Motorsports, Inc. (hereinafter Metal
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Motorsports), was an Arizona corporation authorized to and doing business in
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Maricopa County, Arizona.
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3.
Upon
information
and
belief,
Metal
Motorsports
has
been
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administratively dissolved by the Arizona Corporation Commission, and is likely
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insolvent.
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(hereinafter Pep Boys), was a California corporation authorized to and doing
business in Maricopa County, Arizona.
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440
85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
At all times relevant, The Pep Boys Manny Moe & Jack of California, Inc.
4.
5.
At all times relevant, Recon Enterprise, LLC (hereinafter Recon), was
an Arizona limited liability company doing business in Maricopa County, Arizona.

6.
The true names or capacities, whether individuals, corporations,
associations or otherwise of defendants John and Jane Does 1 through 97, and Black
and White Companies 1-97, are unknown to Plaintiff, who therefore sues said
Defendants by fictitious names. Plaintiff is informed and believes, and thereupon
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alleges, that each of the Defendants designated herein as such is legally responsible in
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some manner for the events and happenings herein referred to, and thereby
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proximately caused injury and damage to Plaintiff as herein alleged. Plaintiff prays for
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leave to amend this Complaint so as to allege their true names and capacities as
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ascertained.
JURISDICTION AND VENUE
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7.
Subject matter jurisdiction is proper in this Court pursuant to 28 U.S.C.
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1331 and 1338 because this action, at least in part, is for patent infringement and
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arises under the Patent laws of the United States, Title 35 of the United States Code.
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Jurisdiction also exists pursuant to 28 U.S.C. 1332(a) because complete diversity of
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citizenship exists between the parties and the amount in controversy exceeds the sum
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or value of $75,000, exclusive of interest and costs. This Court has jurisdiction over
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any Arizona state law claims under principles of pendent, ancillary, and supplemental
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jurisdiction, 28 U.S.C. 1338(b) and 1367(a).
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8.
Venue is proper in this district pursuant to 28 U.S.C. 1391(b), (d), and
1400(b) because, inter alia, one or more of the acts of infringement complained of took
place in this district and have had or will have had effect in this judicial district.
GENERAL AVERMENTS
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440
85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
9.
MMI and its principal have been leaders in designing and developing
motorbike and related products for decades.
resources to remain on the cutting edge of an ever-changing and challenging market.
MMI and Martin Background and the Patent
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Plaintiff has dedicated substantial
To protect their investment in their designs and technology, Plaintiff has
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procured several patents, including design patents. Plaintiffs products built around
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these patented designs have been widely successful, appreciated and embraced by the
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industry.
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11.
On April 28, 2009, United States Patent No. D591,203S (the 203
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Patent) was duly and legally issued to Christopher J. Martin. MMI is the assignee of
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all rights in and title to the 203 Patent. A true and correct copy of the 203 Patent is
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attached as Exhibit A, and incorporated herein by this reference.
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12.
The 203 Patent applies, at least in part, to the ornamental design of an
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asymmetrical mini bike.
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Defendants and the Infringing Activity
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13.
Defendant Pep Boys is a marketer and seller of a variety of vehicle-
related products, including mini bikes.

14.
Defendant Pep Boys was made well aware of the existence, value and
scope of the 203 Patent, as well as other patents owned by or otherwise assigned to
Plaintiff because it was a defendant in a prior lawsuit for infringement of that Patent
arising from the infringing marketing, distribution and sale of a product through Baja,
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Inc. (Baja). Defendant Pep Boys settled the claims against it regarding the 203
Patent in that prior litigation.
440
85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
After that litigation was concluded, and despite its direct knowledge of
the 203 Patent, Pep Boys then agreed to market, distribute and sell an essentially
identical product for Defendant Metal Motorsports. The nearly identical nature of the
products makes it inarguable that Pep Boys was on notice, at least constructively, that
this product infringed the 203 Patent.
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Upon information and belief, Defendant Metal Motorsports was formed
for the specific purpose of marketing, importing, distributing and selling mini bikes.
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Upon information and belief, the company was formed with the assistance and
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direction of a former employee of a company called Baja, Inc., who had been directly
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involved with the marketing, importing, distributing and selling mini bikes during his
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employment with Baja. Upon information and belief, Defendant Metal Motorsports
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was directly aware of the 203 Patent and of the prior litigation concerning that Patent.
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Notwithstanding Defendant Metal Motorsports knowledge and
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appreciation of the value and scope of the 203 Patent, upon information and belief, it
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participated in the design, manufacture, marketing, importing, sale, offer for sale, or
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use of a product that it knew to incorporate the design of the 203 Patent (hereinafter
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referred to as the Infringing Products).
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Upon information and belief, Defendant Metal Motorsports has sold the
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Infringing Products to, or have otherwise made the Infringing Products available for
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subsequent purchase by, Defendant Pep Boys.
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Upon information and belief, Defendant Pep Boys has thereafter made,
imported, distributed, sold, offered for sale and/or used Infringing Products.
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Pep Boys have sold the Infringing Products to, or have otherwise made the Infringing
Products available for subsequent purchase by, Defendant Recon.
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440
85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
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Upon information and belief, Defendant Recon has thereafter made,
imported, distributed, sold, offered for sale and/or used Infringing Products.
22.
Upon information and belief, Defendant Metal Motorsports has actively
induced and currently is actively inducing others to infringe one or more claims of the
203 Patent through its sale of certain products.
Upon information and belief, Defendants Metal Motorsports and/or
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Upon information and belief, Defendant Metal Motorsports has
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contributorily infringed and currently is contributorily infringing the 203 Patent by its
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offer for sale and sale of certain products.
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the 203 Patent.
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25.
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Defendant Metal Motorsports Infringing Products infringe the claim of

Upon information and belief, Defendant Metal Motorsports has been
aware of its infringing activity since prior to its first sale of the Infringing Products.
26.
Upon information and belief, Defendants Pep Boys and Recon have
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been aware of the infringing activity since at least June 5, 2014, when they were sent a
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demand letter on behalf of Plaintiff by counsel for Plaintiff.
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Despite notice of their infringing activity, Defendants have continued
and continue the above activities to date.

28.
The activities of the Defendants with regard to their manufacture,
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importation, distribution, sale, offers for sale and/or use of the Infringing Products,
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are and have been without authorization from Plaintiff.
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COUNT I
PATENT INFRINGEMENT
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85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
This cause of action arises under the Laws of the United States, Title 35,
United States Code.

30.
Plaintiff hereby realleges and incorporates all of the allegations contained
in the above Paragraphs as though fully set forth herein.

31.
Upon information and belief, Defendants have infringed the 203 Patent
under 35 U.S.C. 271 et seq. Upon information and belief, this infringement was
intentional.
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32.
Upon information and belief, Defendants continue to infringe the 203
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Patent under 35 U.S.C. 271 et seq. Upon information and belief, these ongoing acts
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of infringement are intentional.
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33.
Upon information and belief, Defendants, acting through and by their
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respective officers and owners, have, without authority, consent, right or license, and
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in direct infringement of the 203 Patent, made, imported, distributed, sold, offered for
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sale and/or used the Infringing Products in this country, and such Infringing Products
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have been sold and used in this jurisdiction and district.
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34.
Defendants infringing conduct is intentional and unlawful and, upon
information and belief, will continue unless enjoined by this Court.

35.
Because the 203 Patent is a design patent, the additional remedy
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provided for by 35 U.S.C. 289 applies, and Defendants are liable to Plaintiff to the
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extent of their total profit on the Infringing Products, but not less than $250.
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COUNT II
INDUCEMENT OF PATENT INFRINGEMENT
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85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
This cause of action arises under the Patent Laws of the United States,
Title 35, United States Code, in particular under 35 U.S.C. 271(b).

37.

38.
Upon information and belief, Defendants, acting through and by their
respective officers and owners, have, in this country, actively and/or intentionally
induced others to make, import, distribute, sell, offer for sale and/or use the Infringing
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36.
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Products, in direct infringement of the 203 Patent.

39.
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COUNT III
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CONTRIBUTORY PATENT INFRINGEMENT
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40.
This cause of action arises under the Patent Laws of the United States,
Title 35, United States Code, in particular under 35 U.S.C. 271(c).

41.

42.
Upon information and belief, Defendants are furthermore liable for
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contributory infringement, pursuant to 35 U.S.C. 271(c), in that Defendants have
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made, imported, distributed, sold, offered for sale and/or used within the United
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States a component of a patented combination or composition, consisting of a
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material part of the invention, knowing the same to be especially made or adapted for
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use in the infringement of the 203 Patent and not a staple article or commodity of
commerce suitable for substantial non infringing use.
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INJUNCTIVE RELIEF
440
85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
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Defendants wrongful conduct has caused and threatens to cause
irreparable harm to Plaintiff that is incapable of being adequately determined and
adequately remedied by money damages.
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PHOENIX, ARIZONA

COUNT IV
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Plaintiff will continue to suffer irreparable harm unless Defendants are
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enjoined from continuing improper acts, including but not limited to, wrongfully
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infringing, inducing infringement of, and contributing to the infringement of the 203
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Patent.
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47.
Accordingly, Plaintiff is entitled to a preliminary injunction and a
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permanent injunction, prohibiting Defendants from making, using, selling, offering for
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sale, importing and offering to import any and all Infringing Products.
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48.
A Preliminary Injunction is appropriate in this matter:
(a) because
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Plaintiff has a likelihood of success on the merits; (b) Plaintiff faces immediate and
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irreparable harm due to Defendants acts and conduct; (c) that there is a special
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urgency warranting the grant of injunctive relief; and (d) the balance of hardship tips in
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favor of Plaintiff.
DAMAGES
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49.
Plaintiff has suffered, is suffering, and will continue to suffer irreparable
harm and injury as a result of Defendants aforesaid activities. Defendants will, unless
restrained and enjoined, continue to act in the unlawful manner complained of herein,
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all to Plaintiffs irreparable damage.
compensate it for the injuries suffered and threatened.
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85012
(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
By reason of Defendants acts complained of herein, Plaintiff has
suffered monetary damages in an amount that has not yet been determined, but upon
information and belief, is substantially in excess of the sum or value of $75,000,
exclusive of interest and costs.
50.
Plaintiffs remedy at law is not adequate to
51.
Pursuant to 35 U.S.C. 284, Plaintiff is entitled to: an accounting by
Defendants of all revenues received through the commercial exploitation of the
Infringing Products; the imposition of a constructive trust for the benefit of Plaintiff
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upon all such funds in the custody or control of Defendants; and to such other
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damages to which Plaintiff may be determined to be entitled.
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52.
Pursuant to 35 U.S.C. 289, Plaintiff is entitled to recover Defendants
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total profit on the Infringing Products, but not less than $250, as an additional remedy
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for infringement of a design patent.

REQUEST FOR JURY TRIAL
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Plaintiff hereby demands that this cause be tried by a jury.

PRAYER FOR RELIEF
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WHEREFORE, Plaintiff prays as follows:

A.
That judgment be entered that Defendants have infringed, actively
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induced others to infringe, and/or contributorily infringed United States Letters Patent
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No. D591,203S.
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B.
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That Defendants, their agents, officers, directors, employees,
servants, attorneys, privies, successors and assigns, and all holding by, through or
under Defendants, and all those acting for or on the behalf of Defendants, or in active
concert, participation, or combination with them, be enjoined and restrained,
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immediately and preliminarily, during the pendency of this action and permanently
thereafter from:
(1)
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Products, or any colorable imitation thereof,

(2)
SUITE
PHOENIX, ARIZONA
440
85012
(602) 274-4400 / FAX : (602) 274-4401
making, using, selling and/or importing the Infringing
C.
otherwise infringing upon Plaintiffs Patent.
That this Court order Defendants, and their officers, agents,
servants and employees, to deliver up to this Court, and to permit the seizure by
Officers appointed by the Court of all articles and materials infringing upon the rights
of Plaintiff, and particularly, without limitation, all products or other merchandise
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which embodies or includes the Infringing Products, and to be delivered up for
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destruction on the issuance of a final Order in this action, including all Infringing
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Products, and all equipment, molds and other matter or materials for reproducing such
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Infringing Products.
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D.
That Defendants be required to file with the Court within thirty
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(30) days after entry of final judgment of this cause a written statement under oath
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setting forth the manner in which Defendants have complied with the final judgment.
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E.
That Defendants be required to pay to Plaintiff such damages as
Plaintiff has sustained in consequence of Defendants infringement of the 203 Patent.

F.
That Defendants, as an additional remedy for infringement of a
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design patent, be ordered to account for and pay over to Plaintiff all their respective
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gains, profits and advantages derived from the infringement of Plaintiffs Patents,
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pursuant to 35 U.S.C. 289, or such damages as may appear to the Court as proper
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within the Patent Laws.
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G.
That in the alternative, a reasonable royalty be awarded to Plaintiff
pursuant to 35. U.S.C. 284.
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patent rights, that Defendants be ordered to pay Plaintiff enhanced damages (e.g.,
treble damages).
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(602) 274-4400 / FAX : (602) 274-4401
SUITE
PHOENIX, ARIZONA
Due inter alia to Defendants willful infringement of Plaintiffs
H.
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I.
That Defendants be ordered to pay to Plaintiff the costs of this
action, prejudgment interest, and post-judgment interest.

J.
That Defendants be ordered to pay to Plaintiff its reasonable
attorneys fees, pursuant to 35 U.S.C. 285, as well as pursuant to A.R.S. 12-341.01.

K.
Due inter alia to Defendants willful and flagrant disregard of
Plaintiffs patent rights, that this case be found to be exceptional and that Defendants
be ordered to pay Plaintiffs reasonable attorneys fees and experts fees.
L.
That Plaintiff has such other and further relief as the Court may
deem just and proper.
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RESPECTFULLY SUBMITTED this 20th day of July 2016.

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By: /s/Michael Gerity

Michael Gerity
Israel & Gerity, PLLC
202 East Earll Drive, Suite 440
Phoenix, Arizona 85012
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Attorneys for Plaintiff
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CERTIFICATE OF SERVICE
I hereby certify that on this 20th day of July 2016, I electronically transmitted
Plaintiffs Complaint and Jury Demand using the CM/ECF system for filing. There
are no CM/ECF registrants at this time.
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DATED this 20th day of July 2016.

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PHOENIX, ARIZONA
440
85012
(602) 274-4400 / FAX : (602) 274-4401
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By: /s/Michael Gerity

Michael Gerity
Israel & Gerity, PLLC
202 East Earll Drive, Suite 440
Phoenix, Arizona 85012
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EXHIBIT A
203 Patent

MMI v. Metal Motorsports - Complaint

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Case 2:16-cv-02433-DGC Document 1 Filed 07/20/16 Page 1 of 30

MICHAEL GERITY, BAR NO. 015750

UNITED STATES DISTRICT COURT

202 East Earll Drive,

ISRAEL & GERITY, P.L.L.C.

FOR THE DISTRICT OF ARIZONA

Metal Motorsports, Inc., an Arizona

COMPLAINT FOR PATENT

Plaintiff MMI, Inc., (hereinafter MMI) is a corporation organized and

8512 East Jenan in Scottsdale, Arizona.

At all times relevant, Metal Motorsports, Inc. (hereinafter Metal

Motorsports), was an Arizona corporation authorized to and doing business in

Maricopa County, Arizona.

administratively dissolved by the Arizona Corporation Commission, and is likely

Case 2:16-cv-02433-DGC Document 1 Filed 07/20/16 Page 2 of 30

(hereinafter Pep Boys), was a California corporation authorized to and doing

business in Maricopa County, Arizona.

202 East Earll Drive,

ISRAEL & GERITY, P.L.L.C.

At all times relevant, Recon Enterprise, LLC (hereinafter Recon), was

an Arizona limited liability company doing business in Maricopa County, Arizona.

The true names or capacities, whether individuals, corporations,

Defendants by fictitious names. Plaintiff is informed and believes, and thereupon

Subject matter jurisdiction is proper in this Court pursuant to 28 U.S.C.

Jurisdiction also exists pursuant to 28 U.S.C. 1332(a) because complete diversity of

jurisdiction, 28 U.S.C. 1338(b) and 1367(a).

Case 2:16-cv-02433-DGC Document 1 Filed 07/20/16 Page 3 of 30

Venue is proper in this district pursuant to 28 U.S.C. 1391(b), (d), and

202 East Earll Drive,

motorbike and related products for decades.

resources to remain on the cutting edge of an ever-changing and challenging market.

ISRAEL & GERITY, P.L.L.C.

MMI and Martin Background and the Patent

Plaintiff has dedicated substantial

To protect their investment in their designs and technology, Plaintiff has

attached as Exhibit A, and incorporated herein by this reference.

The 203 Patent applies, at least in part, to the ornamental design of an

asymmetrical mini bike.

Defendants and the Infringing Activity

Defendant Pep Boys is a marketer and seller of a variety of vehicle-

related products, including mini bikes.

Case 2:16-cv-02433-DGC Document 1 Filed 07/20/16 Page 4 of 30

Patent in that prior litigation.

202 East Earll Drive,

this product infringed the 203 Patent.

ISRAEL & GERITY, P.L.L.C.

Upon information and belief, Defendant Metal Motorsports was formed

Notwithstanding Defendant Metal Motorsports knowledge and

referred to as the Infringing Products).

subsequent purchase by, Defendant Pep Boys.

Case 2:16-cv-02433-DGC Document 1 Filed 07/20/16 Page 5 of 30

Products available for subsequent purchase by, Defendant Recon.

Upon information and belief, Defendant Recon has thereafter made,

Upon information and belief, Defendant Metal Motorsports has actively

203 Patent through its sale of certain products.

202 East Earll Drive,

Upon information and belief, Defendants Metal Motorsports and/or

ISRAEL & GERITY, P.L.L.C.

Upon information and belief, Defendant Metal Motorsports has

offer for sale and sale of certain products.

the 203 Patent.

Defendant Metal Motorsports Infringing Products infringe the claim of

demand letter on behalf of Plaintiff by counsel for Plaintiff.

Despite notice of their infringing activity, Defendants have continued