1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Gary L. Eastman (CSB #182518) Matthew C. McCartney (CSB #226687) EASTMAN & MCCARTNEY LLP 401 West “A” Street, Suite 1785 San Diego, CA 92101 Telephone: (619) 230-1144 Facsimile: (619) 230-1194 Attorneys for Plaintiff OMNITEK ENGINEERING, CORP. UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA OMNITEK ENGINEERING CORP., a California corporation, Plaintiff, v. CNG ONE SOURCE, INC., a Pennsylvania corporation, Defendant.
'13 CV1948 LAB NLS

Case No.

COMPLAINT FOR DECLARATORY JUDGMENT OF PATENT NON-INFRINGEMENT AND INVALIDITY DEMAND FOR A JURY TRIAL

Plaintiff Omnitek Engineering, Corp. (“Omnitek”) hereby alleges for its complaint against defendant CNG One Source, Inc. (“CNG One Source”) as follows: THE PARTIES 1. Omnitek is a corporation organized and existing under the laws of the

state of California, with its principal place of business in Vista, California. Omnitek is a leading developer of efficient and reliable diesel-to-natural gas engine conversion systems, and complementary products.

1

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

2.

Upon information and belief, CNG One Source is a corporation

organized and existing under the laws of the state of Pennsylvania, with its principal place of business in Franklin, Pennsylvania. JURISDICTION 3. This complaint is brought under the Declaratory Judgment Act,

codified at 28 U.S.C. §§ 2201 et seq. Declaratory judgment jurisdiction is proper because there is a case or actual controversy between Omnitek and CNG One Source. Jurisdiction is proper in this Court under 28 U.S.C. §§ 1331 and 1338(a), because this action arises under the patent laws of the United States, including, but not limited to, 35 U.S.C. §§ 271, 281, 284 and 285. 4. On March 26, 2013, CNG One Source acquired all or substantially all

of the assets of Chapter 11 debtor Emission Solutions, Inc. Attached hereto as Exhibit 1 is a true and correct copy of the asset purchase agreement. 5. As part of the asset purchase agreement, CNG One Source purchased

United States Patent No. 8,011,094 (“the ‘094 patent”) entitled “Method of Converting Diesel Engine to Natural Gas Engine” and United States Patent No. 6,910,269 (“the ‘269 patent”) entitled “Method of Converting Diesel Engine to Natural Gas Engine,” and causes of action for patent infringement. (See Exhibit 1.) Attached hereto as Exhibit 2 is a true and correct copy of the ‘094 patent. Attached hereto as Exhibit 3 is a true and correct copy of the ‘269 patent. 6. Shortly after March 26, 2013, Darius Teslovich, co-owner of CNG

One Source, called Werner Funk, CEO of Omnitek, to inform Mr. Funk that CNG One Source purchased the assets of Emission Solutions, Inc., including, but not limited to, the ‘094 patent and ‘269 patent, and causes of action for patent infringement. During this conversation, Mr. Teslovich asserted that if Omnitek agreed to become a business partner of CNG One Source, then CNG One Source would not sue Omnitek for patent infringement.
2

In response, Mr. Funk denied

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

infringement and declined the invitation to discuss a partnership with CNG One Source. 7. On June 27, 2013 at the ACT Expo in Washington, D.C., Mr.

Teslovich and Mr. Funk had a second conversation regarding CNG One Source’s enforcement of the ‘094 patent and ‘269 patent. During this conversation, Mr. Teslovich again asserted that if Omnitek agreed to become a business partner of CNG One Source, then CNG One Source would not sue Omnitek for patent infringement. In response, Mr. Funk again denied infringement. 8. Notwithstanding his denial of infringement, Mr. Funk inquired into

the nature and scope of the partnership proposed by CNG One Source. Specifically, Mr. Funk asked Mr. Teslovich what CNG One Source offered to contribute to the proposed partnership besides for an agreement not to sue Omnitek for patent infringement. Displeased by the inquiry, Mr. Teslovich responded by

telling Mr. Funk they had nothing further to discuss and that Omnitek should expect a letter from CNG One Source concerning its enforcement of the ‘094 patent and ‘269 patent in the near future. 9. Based on the conversations above, Omnitek is in reasonable

apprehension that CNG One Source will initiate suit against Omnitek for patent infringement if Omnitek continues to develop and sell diesel-to-natural gas engine conversion systems, and complimentary products. 10. ‘269 patent. 11. Omnitek contends the ‘094 patent and ‘269 patent are invalid for Omnitek denies infringement of any valid claim of the ‘094 patent or

failure to comply with one or more of the requirements of the patent laws of the United States, including, but not limited to, those codified at 35 U.S.C. §§ 101, 102, 103 and 112.

3

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

12.

As a direct and proximate result of CNG One Source’s conduct, there

is a “case or controversy” between the parties under the Declaratory Judgment Act, codified at 28 U.S.C. § 2201, and therefore, jurisdiction is proper in this Court. PERSONAL JURISDICTION AND VENUE 13. Personal jurisdiction and venue are proper in this Court under 28

U.S.C. §§ 1391(b)-(c) and/or 1400(b) because, upon information and belief, CNG One Source is doing business in this judicial district, has substantial contacts with this judicial district and purposefully directs its business activities at this judicial district by, among other things, marketing its patented technology for diesel-tonatural gas engine conversion systems, and related goods and services. COUNT 1 (Declaratory Judgment of Non-Infringement of the ‘094 Patent) 14. Omnitek incorporates and realleges the preceding allegations as if set

forth herein in their entirety. 15. Omnitek has not infringed, nor is it presently infringing, any valid

claims of the ‘094 patent. 16. An actual controversy exists between Omnitek and CNG One Source

with respect to whether Omnitek infringed and/or infringes the ‘094 patent. 17. Omnitek seeks a declaratory judgment that it does not infringe any

claims of the ‘094 patent. COUNT 2 (Declaratory Judgment of Non-Infringement of the ‘269 Patent) 18. Omnitek incorporates and realleges the preceding allegations as if set

forth herein in their entirety. 19. Omnitek has not infringed, nor is it presently infringing, and valid

claims of the ‘269 patent.

4

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

20.

An actual controversy exists between Omnitek and CNG One Source

with respect to whether Omnitek infringed and/or infringes the ‘269 patent. 21. Omnitek seeks a declaratory judgment that it does not infringe any

claims of the ‘269 patent. COUNT 3 (Declaratory Judgment of Invalidity of the ‘094 Patent) 22. Omnitek incorporates and realleges the preceding allegations as if set

forth herein in their entirety. 23. An actual controversy exists between Omnitek and CNG One Source

with respect to the validity of the ‘094 patent. 24. The ‘094 patent is invalid for failure to comply with one or more of

the requirements of the patent laws of the United States, including, but not limited to, those codified at 35 U.S.C. §§ 101, 102, 103 and 112. 25. Omnitek seeks a declaratory judgment that the ‘094 patent is invalid. COUNT 4 (Declaratory Judgment of Invalidity of the ‘296 Patent) 26. Omnitek incorporates and realleges the preceding allegations as if set

forth herein in their entirety. 27. An actual controversy exists between Omnitek and CNG One Source

with respect to the validity of the ‘296 patent. 28. The ‘296 patent is invalid for failure to comply with one or more of

the requirements of the patent laws of the United States, including, but not limited to, those codified at 35 U.S.C. §§ 101, 102, 103 and 112. 29. Omnitek seeks a declaratory judgment that the ‘296 patent is invalid.

5

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

PRAYER FOR RELIEF WHEREFORE, Omnitek prays for an Order and entry of judgment against CNG One Source as follows: A. B. C. D. E. Declaring that Omnitek does not infringe the ‘094 patent; Declaring that Omnitek does not infringe the ‘296 patent; Declaring that the ‘094 patent is invalid; Declaring that the ‘296 patent is invalid; Declaring this case exceptional under 35 U.S.C. § 285 and awarding Omnitek its reasonable attorneys’ fees in this action; F. G. Awarding Omnitek its costs and expenses in this action; and Granting such other and further relief as the Court deems proper and just.

Dated: August 20, 2013

EASTMAN & MCCARTNEY LLP By: /s/ Gary L. Eastman Gary L. Eastman, Esq. Attorney for Plaintiff OMNITEK ENGINEERING, CORP.

6

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

DEMAND FOR A JURY TRIAL Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Omnitek Engineering, Corp. demands a jury trial on all claims so triable. Dated: August 20, 2013 EASTMAN & MCCARTNEY LLP By: /s/ Gary L. Eastman Gary L. Eastman, Esq. Attorney for Plaintiff OMNITEK ENGINEERING, CORP.

7

Sign up to vote on this title
UsefulNot useful