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Bradley M. Ganz, OSB 94076 Lloyd L. Pollard II, OSB 07490 Ganz Law, P.C. P.O.

Box 2200 163 SE 2nd Avenue Hillsboro, OR 97123 (503) 844-9009 Facsimile (503) 296-2172 mail@ganzlaw.com Attorneys for All Plaintiffs

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON PORTLAND DIVISION

OMNI TRAX TECHNOLOGY, INC., an Oregon corporation KORKERS PRODUCTS, LLC, an Oregon limited liability company OMNI TRAX, LLC, an Oregon limited liability company OT INDUSTRIAL, LLC, an Oregon limited liability company OT OUTDOOR, LLC, an Oregon limited liability company v. Plaintiffs,

Civil Action No. _________

PLAINTIFFS ORIGINAL COMPLAINT FOR DECLARATORY JUDGMENT

32NORTH CORPORATION, A Maine corporation Defendant.

COMPLAINT OF DECLARATORY JUDGMENT Plaintiffs Omni Trax Technology, Inc., (OT Technology), its subsidiary Korkers Products, LLC (Korkers LLC), Omni Trax LLC (OT), and its subsidiaries OT _____________________________________________________________________________
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Industrial LLC (OT Industrial), and OT Outdoor LLC (OT Outdoor), individually and collectively referred to herein as Korkers, hereby plead the following claims for Declaratory Judgment relief against Defendant 32north Corporation (32north), and alleges as follows:

PARTIES 1. Plaintiff Omni Trax Technology, Inc. (OT Technology) is a corporation organized and existing under the laws of the State of Oregon, having a principal place of business at 729 N.E. 194th Avenue, Portland, Oregon 97230, within this judicial district. 2. Plaintiff Korkers Products, LLC (Korkers) is a limited liability company organized and existing under the laws of the State of Oregon and having a principal place of business at 1239 S.E. 12th Avenue, Portland, Oregon, 97214, within this judicial district. 3. Plaintiff Omni Trax LLC (OT) is a limited liability company organized and existing under the laws of the State of Oregon and having a principal place of business at 1239 S.E. 12th Avenue, Portland, Oregon, 97214, within this judicial district. 4. Plaintiff OT Industrial LLC (OT Industrial) is a limited liability company organized and existing under the laws of the State of Oregon and having a principal place of business at 1239 S.E. 12th Avenue, Portland, Oregon, 97214, within this judicial district. 5. Plaintiff OT Outdoor LLC (OT Outdoor) is a limited liability company organized and existing under the laws of the State of Oregon and having a principal place of _____________________________________________________________________________
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business at 1239 S.E. 12th Avenue, Portland, Oregon, 97214, within this judicial district. 6. Upon information and belief, defendant 32north Corporation (32north) is a corporation organized under and existing under the laws of Maine, having a place of business at 16 Pomerleau Street, Biddeford, Maine, 04005, and doing business in Oregon.

JURISDICTION AND VENUE 7. The Court has subject matter jurisdiction over this action and the matters pleaded herein under 28 U.S.C. 1331 and 1338(a) because the action arises under the Federal Declaratory Judgment Act, 28 U.S.C. 2201, et seq., the Patent Act of the United States, 35 U.S.C. 101, et seq., and the Lanham Act, 15 U.S.C. 1051, et seq. Korkers seeks a declaration from the Court that 32norths U.S. Design Patent No. D549,429 (429 Design Patent) and U.S. Design Patent No. D571,092 are invalid, unenforceable, and/or not infringed by Korkers, and that no trademark right of 32north is infringed by Korkers. 8. The Court has general personal jurisdiction over 32north because, on information and belief, 32north has done and is doing business in this state. The Court has specific personal jurisdiction over 32north because 32north has had other sufficient contacts with residents in this judicial district to confer personal jurisdiction over it on the Court

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9.

Venue is proper in the District of Oregon pursuant to 28 U.S.C. 1391 and 1400(b) because 32north is subject to personal jurisdiction in this district and because a substantial part of the events giving rise to plaintiffs claims occurred in this district.

GENERAL ALLEGATIONS 10. In a letter dated October 25, 2013, and addressed to Sean Beers, Chief Executive Officer of Korkers Products, LLC, at its principal place of business in this judicial district, 32north demanded that all sales and manufacturing of certain accused products cease, that the accused products currently in the market be recalled, and that an accounting of all sales and revenues from the accused products be provided to 32north. 32north also threatened to bring suit for alleged infringement of U.S. Design Patent No. D549,429 (the 429 Design Patent), attached hereto as Exhibit A, and U.S. Design Patent No. D571,092 (the 092 Design Patent), attached hereto as Exhibit B, as well as alleged infringement of 32norths registered chevron trademark . 11. In a letter dated November 6, 2013, Korkers responded to 32norths demands and threatened litigation by providing 32north with notice that the 429 Design Patent and the 092 Design Patent are unenforeacble and invalid based on identical prior art disclosure occurring in prior art publications, uses, and/or sales which were not disclosed to the U.S. Patent and Trademark Office during prosecution of the application leading to the 429 Design Patent or prosecution of the application leading to the 092 Design Patent. 12. On its face, the 429 Design Patent alleges to have matured from an application filed on September 12, 2006. However, the subject matter claimed in the 429 Design _____________________________________________________________________________
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Patent was identically disclosed more than 15 years earlier in U.S. Patent Application No. 616,613, which matured in U.S. Patent No. 5,335,429 (the 429 Prior Art , attached as Exhibit C) on August 9, 1994 (i.e., over one decade before the application leading to the 429 Design Patent was even filed). The subject matter claimed in the 429 Design Patent was again disclosed in U.S. Patent Application No. 08/264,976, filed on June 24, 1994, which matured into U.S. Patent No. 5,992,053 (the 053 Patent, attached as Exhibit D) on November 30, 1999. That the 429 Design Patents claimed subject matter is identical to the disclosure from the 429 Prior Art and to the disclosure in the 053 Patent is readily apparent from a comparison of representative drawings taken from the 429 Design Patent and from the 429 Prior Art :

429 Design Patent

429 Prior Art

13. On its face, the 092 Design Patent alleges to have matured from an application filed on September 12, 2006. However, the subject matter claimed in the 092 Design Patent was identically disclosed more than 15 years earlier in the application leading to the 429 Prior Art, which issued more than one decade before the 092 Design Patent was even filed. The subject matter claimed in the 092 Design Patent was again disclosed in the application that matured into the 053 Patent on November 30, _____________________________________________________________________________
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1999. That the 092 Design Patents claimed subject matter is identical to the disclosure from the 429 Prior Art and to the disclosure in the 053 Patent is readily apparent from a comparison of representative drawings taken from the 092 Design Patent and from the 429 Prior Art:

092 Design Patent

429 Prior Art

14. On information and belief, U.S. Trademark Registration No. 1,677,707 matured from an application in which a specimen of use (attached as Exhibit E), filed on March 1, 2002, showed the patented subject matter from the 429 Design Patent. The specimen of use was accompanied by an allegation that the goods depicted in the specimen of use were previously sold in commerce (i.e., more than one year before the application leading to the 429 Design Patent was filed). 15. Accordingly, 32north was aware of sales activity of the patented subject matter occurring more than one year before the 429 Design Patent was filed. 16. None of the 429 Prior Art, the 053 Patent, the specimen of use, or materially relevant pre-filing sales activity, was disclosed to the United States Patent and Trademark Office during prosecution of the application leading to the 429 Design Patent or in the application leading to the 092 Design Patent. Such information is _____________________________________________________________________________
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lacking from the file history of the 429 Design Patent and from the 092 Design Patent, and yet would have been considered important, materially relevant prior art to a reasonable examiner during examination of the applications leading to the 429 Design Patent and the 092 Design Patent. On information and belief, neither the claim in the 429 Design Patent nor the claim in the 092 Design Patent would have issued had the undisclosed prior art references and sales activities been considered by the Patent Office during examination of the application leading to the 429 Design Patent. 17. In a letter dated November 6, 2013, Korkers proposed terms for settling the dispute between the parties. As of the date and time of filing this Complaint, Korkers has received no substantive response to the proposed settlement. 18. Given all the circumstances, there is an actual and justiciable controversy between the parties of sufficient immediacy and reality as to warrant the issuance of a declaratory judgment. In particular, the circumstances has placed Korkers under a reasonable apprehension that 32north will file suit against it imminently for allegedly infringing the 429 Design Patent and/or 32norths purported trademark rights. 19. Accordingly, there is an actual and justiciable controversy between the parties concerning whether any acts by any of the Korkers plaintiffs constitute an infringement of the 429 Design Patent or any of 32norths purported trademark rights. 20. Korkers, and each Korkers plaintiff, denies that it has infringed (or infringes) any valid and enforceable claim of the 429 Design Patent, or that it has infringed (or infringes) any of 32norths purported trademark rights. _____________________________________________________________________________
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FIRST CLAIM FOR RELIEF Declaratory Relief Regarding Invalidity of the 429 Design Patent and of the 092 Design Patent 21. Korkers incorporates herein the allegations of paragraphs 1-20. 22. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. 2201 et seq., Korkers requests the declaration of the Court that each claim of the 429 Design Patent and of the 092 Design Patent is invalid under the Patent Act, 35 U.S.C. 101, et seq., including, but not limited to, sections 102, 103, and/or 112.

SECOND CLAIM FOR RELIEF Declaratory Relief Regarding Unenforceability of the 429 Design Patent and the 092 Design Patent 23. Korkers incorporates herein the allegations of paragraphs 1-22. 24. On information and belief, 32north or its predecessor in interest was aware of invalidating, prior art sales activity because it represented to the U.S. Patent and Trademark Office that the product shown in the specimen of use (Exhibit E) was on sale earlier than March 1, 2002. Nonetheless, such prefiling sales activity was not disclosed to the U.S. Patent and Trademark Office in connection with examination of the applications leading to the 429 Design Patent and the 092 Design Patent. 25. On information and belief, 32norths knowing and willful concealment of the prefiling sales activity from the U.S. Patent and Trademark Office in connection with _____________________________________________________________________________
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examination of the applications leading to the 429 Design Patent and the 092 Design Patent constitutes actionable fraud on the Patent Office. 26. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. 2201 et seq., Korkers requests the declaration of the Court that no claim of the 429 Design Patent or of the 092 Design Patent is enforceable for inequitable conduct.

THIRD CLAIM FOR RELIEF Declaratory Relief Regarding Noninfringement of the 429 Design Patent and of the 092 Design Patent 27. Korkers incorporates herein the allegations of paragraphs 1-26. 28. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. 2201 et seq., Korkers requests the declaration of the Court that Korkers does not infringe and have not infringed any claim of the 429 Design Patent or of the 092 Design Patent.

FOURTH CLAIM FOR RELIEF Declaratory Relief Finding This to be an Exceptional Case Under 35 U.S.C. 285 29. Korkers incorporates herein the allegations of paragraphs 1-28. 30. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. 2201 et seq., Korkers requests the declaration of the Court that this case is an exceptional case under 35 U.S.C. 285 entitling Korkers to an award of reasonable attorney fees.

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PRAYER FOR RELIEF WHEREFORE, Korkers prays for judgment as follows: (1) That the claims of the 429 Design Patent are invalid; (2) That the claims of the 429 Design Patent are unenforceable; (3) That Korkers does not infringe and has not infringed, directly or indirectly, any claim of the 429 Design Patent; (4) That the claims of the 092 Design Patent are invalid; (5) That the claims of the 092 Design Patent are unenforceable; (6) That Korkers does not infringe and has not infringed, directly or indirectly, any claim of the 092 Design Patent; (7) That Korkers does not infringe any purported trademark rights of 32north; (8) That 32north, and all persons acting on its behalf or in concert with it, be permanently enjoined and restrained from charging, orally or in writing, that the 429 Design Patent or the 092 Design Patent is infringed, directly or indirectly, by Korkers, or that any of 32norths purported trademark rights is infringed by Korkers ; (9) That Korkers be awarded its costs, expenses, and reasonable attorney fees in this action; and (10) That Korkers be awarded such other and further relief as the Court may deem

appropriate.

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Respectfully submitted, Dated: November 27, 2013 /s/ Bradley M. Ganz Bradley M. Ganz, OSB 94076 Ganz Law, P.C. 163 SE 2nd Avenue Hillsboro, Oregon 97123 (503) 844-9009 mail@ganzlaw.com Of Attorneys for All Plaintiffs

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