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: 3:13-cv-532 v. : JURY TRIAL DEMANDED : MASTERCRAFT BOAT : COMPANY, LLC and : JAMES SCHULTZ : : Defendants. : ______________________________________________________________________________
COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY Plaintiff Protomet Corporation (“Protomet” or “Plaintiff”) complains and avers against Defendants MasterCraft Boat Company, LLC (“MasterCraft”) and James Schultz (“Schultz”) (collectively, “Defendants”) as follows: PARTIES 1. Protomet is a Tennessee corporation having a principle place of business at 1010
Larson Drive, Oak Ridge, Tennessee 37830-8013. 2. On information and belief, Defendant MasterCraft is a Delaware corporation with
a principle place of business at 100 Cherokee Cove Drive, Vonore, Tennessee 37885-2129. 3. On information and belief, Defendant Schultz is an individual residing at 211
Sandy Point Lane, Lake Zurich, Illinois 60047.
JURISDICTION AND VENUE 4. Protomet brings this action under Title 35 of the United States Code, and 28
U.S.C. §§ 2201-2202, seeking a Declaratory Judgment that United States Patent No. 6,886,795 (“the ‘795 Patent” or “the patent-at-issue”) is not infringed by Protomet, and for a Declaratory Judgment that the ‘795 Patent is invalid and/or unenforceable. A copy of the ‘795 Patent is attached hereto as Exhibit A. 5. This action arises under the Patent Laws of the United States. This Court has
subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). 6. This Court has personal jurisdiction over Defendants because, on information and
belief, each conducts substantial business within this District, including, inter alia, efforts to license and/or enforce certain patents that are at issue in this matter. 7. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c). COUNT I – DECLARATORY JUDGMENT OF NON-INFRINGEMENT 8. On information and belief, Defendant Schultz is the owner of the ‘795 Patent. On
information and belief, Defendant MasterCraft is the exclusive licensee of rights in and to the ‘795 Patent. The ‘795 Patent (see Exhibit A), entitled “Accessory Storage device,” issued from United States Patent Application No. 10/407,293, filed on April 4, 2003, and claims dependency from United States Provisional Patent Application No. 60/370,075, filed on April 4, 2002. The ‘795 Patent names on its face Defendant Schultz as sole inventor. 9. Protomet is a manufacturing and engineering company based in Oak Ridge,
Tennessee. Among other products, Protomet manufactures products and accessories in the field of boating and wakeboarding, including a wakeboard rack product, in competition with Defendants MasterCraft and Schultz.
Protomet has been selling its wakeboard rack product in competition with
Defendants for over two (2) years prior to this suit. 11. By letter dated August 12, 2013, Defendants, by and through their counsel, wrote
to one of Protomet’s customers, Malibu Boats, LLC, and instructed Malibu Boats, LLC that the Protomet wakeboard rack being considered by Malibu Boats, LLC was patented by Defendant Schultz, and demanded Malibu Boats, LLC to refrain from making or selling Protomet’s wakeboard rack, which Defendants accused of infringing the ‘795 Patent. Such letter is attached as Exhibit B. 12. By letters dated August 14, 2013 and August 28, 2013, Defendants wrote to
Protomet and accused Protomet of infringing the ‘795 Patent through the manufacture and sale of its “Clamp4rce” wakeboard rack. Such letter is attached as Exhibit C. 13. By letter dated August 14, 2013, Defendants, by and through their counsel, wrote
to another of Protomet’s customers, Tigé Boats, Inc., and instructed Tigé Boats, Inc. that the Protomet wakeboard rack sold by Tigé Boats, Inc. was patented by Defendant Schultz, and demanded Tigé Boats, Inc. to refrain from making or selling Protomet’s wakeboard rack, which Defendants accused of infringing the ‘795 Patent. Such letter is attached as Exhibit D. 14. On information and belief, Defendants contacted at least three (3) ski and/or
wakeboard industry professionals who endorse Protomet’s products, and demanded that the professionals instruct Protomet to entirely remove any reference to themselves or their likeness from any current or future advertising and marketing materials for Protomet products. 15. As a result of the aforementioned communications to Protomet, Protomet’s
customers, and Protomet’s sponsors, Protomet has a reasonable fear and apprehension that Defendants will bring patent infringement litigation against it. Consequently, an actual and
justiciable controversy exists between Protomet and Defendants with respect to alleged infringement of the ‘795 Patent. 16. Protomet has not infringed, and is not infringing, the ‘795 Patent, either literally
or under the doctrine of equivalents, directly or contributorily, and Protomet has not induced, and is not inducing, the infringement of the ‘795 Patent. 17. Protomet hereby seeks entry of a Declaratory Judgment that the claims of the 795
Patent are not infringed by Protomet. 18. The allegations of Defendants that Protomet is infringing, and/or has infringed,
the ‘795 Patent are frivolous, and this is an exceptional case within the meaning of 35 U.S.C. § 285, entitling Protomet to an award of its attorney fees and costs of this litigation. COUNT II – DECLARATORY JUDGMENT OF INVALIDITY AND/OR UNENFORCEABILITY 19. 20. Paragraphs 1-18 are incorporated herein by reference. The claims of the ‘795 Patent are invalid and/or unenforceable for failure to meet
the requirements of Title 35, United States Code, including, but not limited to, Sections 101, 102, 103, 112, and the rules and regulations pertaining thereto. Consequently, an actual and justiciable controversy exists between Protomet and Defendants with respect to the validity and/or enforceability of the ‘795 Patent. 21. Protomet hereby seeks entry of a Declaratory Judgment that the claims of the 795
Patent are invalid and/or unenforceable. 22. Protomet reserves the right to raise claims of inequitable conduct and/or
exceptionality if the discovery and evidence support such claims.
WHEREFORE, Protomet Corporation prays: (1) That the Court enter an Order permanently enjoining Defendants and their
officers, agents, representatives, servants, subcontractors, suppliers, and employees and others controlled by Defendants, from making further allegations or claims that Plaintiff has infringed the ‘795 Patent; (2) that the Court declare that the ‘795 Patent is not infringed, and has not been
infringed, by any product of Plaintiff; (3) (3) (4) that the Court declare that the ‘795 Patent is invalid and/or unenforceable; that the Court award Plaintiff its attorney fees and cost of the action; and for such other and further relief as the Court may deem just and equitable. Respectfully submitted, _/Andrew C. Lake/__________________ Andrew C. Lake (TN #29,952) email@example.com Robert E. Pitts (TN #1,610) firstname.lastname@example.org Jacob G. Horton (TN #25,467) email@example.com PITTS & LAKE, P.C. 1319 Old Weisgarber Rd. Knoxville, TN 37909 Phone: (865) 584-0105 Fax: (865) 584-0104 ATTORNEYS FOR PLAINTIFF PROTOMET CORPORATION