Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`FISHER-PRICE, INC. and
`MATTEL, INC.,
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`Plaintiffs,
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`COMPLAINT
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`C.A. No. _____________
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`JURY TRIAL DEMANDED
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`v.
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`DYNACRAFT BSC, INC.,
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`Defendant.
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`Plaintiffs Fisher-Price, Inc. (“Fisher-Price”) and Mattel, Inc. (“Mattel”), by and through
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`their attorneys, for their Complaint against Dynacraft BSC, Inc. (“Dynacraft”), hereby allege as
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`follows:
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`PARTIES
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`1.
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`Plaintiff Fisher-Price, a corporation organized under the laws of Delaware having
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`its principal place of business in East Aurora, New York, is one of the world’s leading designers
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`and makers of children’s products, including battery-powered ride-on products. Fisher-Price’s
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`battery-powered ride-ons are sold under the Power Wheels name, and Power Wheels is a
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`recognized brand leader in the battery-powered ride-on market segment. Fisher-Price is a
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`wholly-owned subsidiary of Mattel.
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`2.
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`Plaintiff Mattel, a corporation organized under the laws of Delaware having its
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`principal place of business in El Segundo, California, is one of the world’s leading designers and
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`makers of toys.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 2 of 12
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`3.
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`On information and belief, defendant Dynacraft is a corporation organized and
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`existing under the laws of the Commonwealth of Massachusetts and having a principal place of
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`business at 89 South Kelly Road, American Canyon, CA 94503.
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`JURISDICTION AND VENUE
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`4.
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`This action arises under the patent laws of the United States of America, 35
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`U.S.C. § 1, et seq.
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`5.
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`This Court has jurisdiction over the subject matter of the action pursuant to 28
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`U.S.C. §§ 1331 and 1338(a).
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`6.
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`This Court has personal jurisdiction over Dynacraft because upon information and
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`belief, it conducts business in this judicial district and has committed acts of patent infringement
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`in the judicial district including, inter alia, making, using, selling, offering for sale, and/or
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`importing infringing ride-on products, including the 24V Disney Princess Carriage ride-on
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`product (hereinafter “Accused Products”) in this judicial district. In addition, Dynacraft regularly
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`places its products within the stream of commerce, with the knowledge and/or understanding that
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`such products will be sold in this judicial district.
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`7.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 (b) and (c)
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`and § 1400(b).
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`BACKGROUND
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`8.
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`United States Patent No. 7,222,684 (“the ’684 patent”), entitled “System,
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`Apparatus, and Method for Providing Control of a Toy Vehicle,” was duly and legally issued on
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`May 29, 2007 naming David A. Norman, Robert H. Mimlitch, III, and Richard Torrance as
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`inventors, and is in full force and effect. A true and correct copy of the ’684 patent is attached as
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`Exhibit A.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 3 of 12
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`9.
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`Plaintiff Mattel is the owner of the ’684 patent by way of assignment from
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`Innovation First, Inc.
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`10.
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`United States Patent No. 7,487,850 (“the ’850 patent”), entitled “Children’s Ride-
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`On Vehicles Having Improved Shifter Assemblies,” was duly and legally issued on February 10,
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`2009 naming Christopher F. Lucas and John Rhein as inventors, and is in full force and effect. A
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`true and correct copy of the ’850 patent is attached as Exhibit B.
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`11.
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`Plaintiff Mattel is the owner of the ’850 patent by way of assignments from
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`Christopher F. Lucas and John Rhein.
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`12.
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`United States Patent No. 7,621,543 (“the ’543 patent”), entitled “Blow-Molded
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`Wheels Having Undercut Treads, Methods for Producing the Same, and Children’s Ride-On
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`Vehicles Including the Same,” was duly and legally issued on November 24, 2009 naming Albert
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`L. Arendt, James R. Carducci, and Christopher F. Lucas as inventors, and is in full force and
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`effect. A true and correct copy of the ’543 patent is attached as Exhibit C.
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`13.
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`Plaintiff Mattel is the owner of the ’543 patent by way of assignments from Albert
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`L. Arendt, Christopher F. Lucas, and James R. Carducci.
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`14.
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`United States Patent No. 7,950,978 (“the ’978 patent”), entitled “System,
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`Apparatus and Method for Providing Control of a Toy Vehicle,” was duly and legally issued on
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`May 31, 2011 naming David A. Norman, Robert H. Mimlitch, III, and Richard D. Torrance as
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`inventors, and is in full force and effect. A true and correct copy of the ’978 patent is attached as
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`Exhibit D.
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`15.
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`Plaintiff Mattel is the owner of the ’978 patent by way of assignment from
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`Innovation First, Inc.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 4 of 12
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`16.
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`Plaintiff Mattel has granted Plaintiff Fisher-Price an exclusive license to the ’684
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`patent, the ’850 patent, the ’543 patent, and the ’978 patent and Plaintiff Fisher-Price has the sole
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`right to make, use, and sell the inventions claimed by the ’684 patent, the ’850 patent, the ’543
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`patent, and the ’978 patent.
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`17.
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`After incurring considerable research and development costs, Fisher-Price is in
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`the process of releasing a new line of battery-powered ride-on products with electronic speed
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`controls that, inter alia, practice the technology of the ’684 and ’978 patents. This technology
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`will be included in, e.g., Fisher-Price’s Power Wheels ride-ons with Smart DriveTM and Smooth
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`Start TechnologyTM. Electronic speed control technology allows a child’s ride-on to soft-start, or
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`accelerate more smoothly, which reduces the abrupt nature in which many children’s battery-
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`powered ride-ons start. As part of their development efforts, Fisher-Price and Mattel acquired
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`the ’684 and ’978 patents from Innovation First, a former component supplier to Fisher-Price for
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`the manufacture of battery-powered ride-ons. In contrast to Fisher-Price’s approach, and just as
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`Fisher-Price’s new line was reaching market, Dynacraft released the Accused Products with an
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`electronic speed control circuit without rights to any of Fisher-Price’s and Mattel’s patents.
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`Moreover, on information and belief, Dynacraft developed its speed control circuit by copying
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`the design of a prior Innovation First electronic speed control circuit board that was incorporated
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`into Fisher-Price Power Wheels products. Dynacraft also released the Accused Products without
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`rights to certain Fisher-Price and Mattel shifter and wheel patents, described below, that apply to
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`them.
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`18.
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`Plaintiff Fisher-Price has complied with the requirements of 35 U.S.C. § 287 with
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`respect to at least the ’850 patent, the ’978 patent and the ’684 patent.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 5 of 12
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`COUNT I
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`PATENT INFRINGEMENT
`(Infringement of the ’684 Patent)
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`19.
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`Plaintiffs Fisher-Price and Mattel repeat and reallege the allegations of paragraphs
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`1 through 18 as if set forth herein.
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`20.
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`Dynacraft has directly infringed and continues to directly infringe at least claims
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`1-3, 5-6, 9, 11-13, 15-16, 22-24, 27-28, 32-34, and 37-38 of the ’684 patent. For example,
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`Dynacraft has directly infringed and continues to directly infringe the ’684 patent in violation of
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`35 U.S.C. § 271(a) by using in the United States, without authority, at least the Accused Products
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`so as to practice, either literally or under the doctrine of equivalents, each step of at least the
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`method claims of the ’684 patent identified above.
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`21.
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`Dynacraft has also directly infringed and continues to directly infringe the ’684
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`patent in violation of 35 U.S.C. § 271(a) by making, having made, using, selling and/or offering
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`to sell within the United States, and/or importing into the United States, without authority, at
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`least the Accused Products which embody, either literally or under the doctrine of equivalents,
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`each element of at least the apparatus claims of the ’684 patent identified above.
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`22.
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`A claim chart detailing infringement of the ’684 patent is attached hereto as
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`Exhibit E.
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`23.
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`Dynacraft continues to promote, advertise, and instruct customers and potential
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`customers about the Accused Products and how to use them, including infringing uses under 35
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`U.S.C. § 271. Dynacraft’s promotion, advertising, and instruction efforts include, at a minimum,
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`publication of owner’s manuals for the Accused Product, one of which is attached hereto as
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`Exhibit F. See http://www.dynacraftwheels.com/pub/media/Support_Documents
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`/8802-64_20160420_small.pdf. Upon information and belief, Dynacraft engages in these acts
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 6 of 12
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`with the actual intent to cause the acts which it knows or should know would constitute direct
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`infringement by third parties, including end users of the Accused Products. Thus, Dynacraft is
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`inducing infringement of at least claims 1-3, 5-6, 9, 22-24, 27-28, and 37 in violation of 35
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`U.S.C. § 271(b).
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`24.
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`Dynacraft sells the Accused Products to third parties in the United States for use
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`in practicing the patented methods, knowing that such products are material to practicing the
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`claimed inventions, and are not staple articles or commodities of commerce suitable for
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`substantial non-infringing use, in violation of 35 U.S.C. § 271(c). For example, the Accused
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`Products constitute a material part of the invention claimed in the ’684 patent at least because
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`they contain all of the components to generate the claimed transition signal for soft-start
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`acceleration. The Accused Products are made or especially adapted for use in an infringement of
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`the ’684 patent and have no substantial non-infringing uses at least because they contain
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`components to generate the claimed transition signal for soft-start acceleration. The use of the
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`Accused Products during normal operation by Dynacraft’s direct and indirect customers directly
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`infringes the ’684 patent. Thus, Dynacraft is contributing to infringement of at least claims 1-3,
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`5-6, 9, 22-24, 27-28, and 37 of the ’684 patent in violation of 35 U.S.C. § 271(c).
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`25.
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`Dynacraft’s infringement of the ’684 patent is willful pursuant to 35 U.S.C. § 284,
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`at least as of the filing of this complaint. Despite Dynacraft’s knowledge of and notice of the
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`’684 patent and its infringement, Dynacraft continues to make, have made, use, sell and/or offer
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`to sell within the United States, and/or import into the United States, without authority, the
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`Accused Products which infringe the ’684 patent, and continues to promote, advertise, and
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`instruct customers and potential customers about infringing uses of the Accused Products.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 7 of 12
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`Dynacraft lacks a justifiable belief that it does not infringe the ’684 patent, or that the ’684 patent
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`is invalid, and acts recklessly in its infringing activity.
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`26.
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`Dynacraft’s acts of infringement have caused Fisher-Price and Mattel to sustain
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`monetary damage, loss and injury, in an amount to be determined at trial.
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`27.
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`Dynacraft’s acts of infringement will continue to be willful and deliberate, and
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`unless enjoined by this Court, will continue to cause Fisher-Price and Mattel to sustain
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`irreparable damage, loss and injury, for which Fisher-Price and Mattel have no adequate remedy
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`at law.
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`COUNT II
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`PATENT INFRINGEMENT
`(Infringement of the ’850 Patent)
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`28.
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`Plaintiffs Fisher-Price and Mattel repeat and reallege the allegations of paragraphs
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`1 through 18 as if set forth herein.
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`29.
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`Dynacraft has directly infringed and continues to directly infringe at least claims
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`1-2, 4, 6-7, and 10-14 of the ’850 patent. For example, Dynacraft has directly infringed and
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`continues to directly infringe the ’850 patent in violation of 35 U.S.C. § 271(a) by making,
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`having made, using, selling and/or offering to sell within the United States, and/or importing into
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`the United States, without authority, at least the Accused Products which embody, either literally
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`or under the doctrine of equivalents, each element of at least the claims of the ’850 patent
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`identified above.
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`30.
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`A claim chart detailing infringement of the ’850 patent is attached hereto as
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`Exhibit G.
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`31.
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`Dynacraft’s infringement of the ’850 patent is willful pursuant to 35 U.S.C. § 284
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`at least as of the filing of this complaint. Despite Dynacraft’s knowledge of and notice of the
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 8 of 12
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`’850 patent and its infringement, Dynacraft continues to make, have made, use, sell and/or offer
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`to sell within the United States, and/or import into the United States, without authority, at least
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`the Accused Products which infringe the ’850 patent. Dynacraft lacks a justifiable belief that it
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`does not infringe the ’850 patent, or that the ’850 patent is invalid, and acts recklessly in its
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`infringing activity.
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`32.
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`Dynacraft’s acts of infringement have caused Fisher-Price and Mattel to sustain
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`monetary damage, loss and injury, in an amount to be determined at trial.
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`33.
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`Dynacraft’s acts of infringement will continue to be willful and deliberate, and
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`unless enjoined by this Court, will continue to cause Fisher-Price and Mattel to sustain
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`irreparable damage, loss and injury, for which Fisher-Price and Mattel have no adequate remedy
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`at law.
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`COUNT III
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`PATENT INFRINGEMENT
`(Infringement of the ’543 Patent)
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`34.
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`Plaintiffs Fisher-Price and Mattel repeat and reallege the allegations of paragraphs
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`1 through 18 as if set forth herein.
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`35.
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`Dynacraft has directly infringed and continues to directly infringe at least claims
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`1, 5-8, and 10 of the ’543 patent. For example, Dynacraft has directly infringed and continues to
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`directly infringe the ’543 patent in violation of 35 U.S.C. § 271(a) by making, having made,
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`using, selling and/or offering to sell within the United States, and/or importing into the United
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`States, without authority, at least the Accused Products which embody, either literally or under
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`the doctrine of equivalents, each element of at least the claims of the ’543 patent identified
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`above.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 9 of 12
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`36.
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`A claim chart detailing infringement of the ’543 patent is attached hereto as
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`Exhibit H.
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`37.
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`Dynacraft’s infringement of the ’543 patent is willful pursuant to 35 U.S.C. § 284
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`at least as of the filing of this complaint. Despite Dynacraft’s knowledge of and notice of the
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`’543 patent and its infringement, Dynacraft continues to make, have made, use, sell and/or offer
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`to sell within the United States, and/or import into the United States, without authority, at least
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`the Accused Products which infringe the ’543 patent. Dynacraft lacks a justifiable belief that it
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`does not infringe the ’543 patent, or that the ’543 patent is invalid, and acts recklessly in its
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`infringing activity.
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`38.
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`Dynacraft’s acts of infringement have caused Fisher-Price and Mattel to sustain
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`monetary damage, loss and injury, in an amount to be determined at trial.
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`39.
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`Dynacraft’s acts of infringement will continue to be willful and deliberate, and
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`unless enjoined by this Court, will continue to cause Fisher-Price and Mattel to sustain
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`irreparable damage, loss and injury, for which Fisher-Price and Mattel have no adequate remedy
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`at law.
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`COUNT IV
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`PATENT INFRINGEMENT
`(Infringement of the ’978 Patent)
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`40.
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`Plaintiffs Fisher-Price and Mattel repeat and reallege the allegations of paragraphs
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`1 through 18 as if set forth herein.
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`41.
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`Dynacraft has directly infringed and continues to directly infringe at least claims
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`1-3, 5-6, 8-10, 13-14, 21, and 24 of the ’978 patent. For example, Dynacraft has directly
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`infringed and continues to directly infringe the ’978 patent in violation of 35 U.S.C. § 271(a) by
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`making, having made, using, selling and/or offering to sell within the United States, and/or
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 10 of 12
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`importing into the United States, without authority, at least the Accused Products which embody,
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`either literally or under the doctrine of equivalents, each element of at least the claims of the ’978
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`patent identified above.
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`42.
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`A claim chart detailing infringement of the ’978 patent is attached hereto as
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`Exhibit I.
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`43.
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`Dynacraft’s infringement of the ’978 patent is willful pursuant to 35 U.S.C. § 284
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`at least as of the filing of this complaint. Despite Dynacraft’s knowledge of and notice of the
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`’978 patent and its infringement, Dynacraft continues to make, have made, use, sell and/or offer
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`to sell within the United States, and/or import into the United States, without authority, at least
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`the Accused Products which infringe the ’978 patent. Dynacraft lacks a justifiable belief that it
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`does not infringe the ’978 patent, or that the ’978 patent is invalid, and acts recklessly in its
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`infringing activity.
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`44.
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`Dynacraft’s acts of infringement have caused Fisher-Price and Mattel to sustain
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`monetary damage, loss and injury, in an amount to be determined at trial.
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`45.
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`Dynacraft’s acts of infringement will continue to be willful and deliberate, and
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`unless enjoined by this Court, will continue to cause Fisher-Price and Mattel to sustain
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`irreparable damage, loss and injury, for which Fisher-Price and Mattel have no adequate remedy
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`at law.
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`PRAYER FOR RELIEF
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`WHEREFORE, Fisher-Price and Mattel request entry of judgment in their favor and
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`against Dynacraft that:
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 11 of 12
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`(a)
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`Dynacraft has directly infringed, contributorily infringed, and/or induced
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`infringement of one or more claims of the ’684 patent, the ’850 patent, the ’543
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`patent, and the ’978 patent;
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`(b)
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`Dynacraft has willfully infringed one or more claims of the ’684 patent, the ’850
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`patent, the ’543 patent, and the ’978 patent;
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`(c)
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`Fisher-Price and Mattel be awarded damages, including pre-judgment and post-
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`judgment interest, in an amount adequate to compensate for Dynacraft’s
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`infringement of the ’684 patent, the ’850 patent, the ’543 patent, and the ’978
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`patent, and that the damages be trebled pursuant to 35 U.S.C §284;
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`(d)
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`Dynacraft and its respective officers, agents, servants, employees, and attorneys,
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`and those persons in active concert or participation with them who receive actual
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`notice of the order by personal service or otherwise, be permanently enjoined
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`from committing further acts of infringement of any one or more claims of the
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`’684 patent, the ’850 patent, the ’543 patent, and the ’978 patent pursuant to 35
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`U.S.C. § 283;
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`(e)
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`Fisher-Price and Mattel be awarded their costs, expenses and attorney fees in this
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`action pursuant to 35 U.S.C. § 285; and
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`(f)
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`Fisher-Price and Mattel be awarded such other and further relief as this Court may
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`deem to be just and proper.
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`Case 4:17-cv-03745-PJH Document 1 Filed 01/17/17 Page 12 of 12
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`JURY DEMAND
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`Plaintiffs Fisher-Price and Mattel demand a trial by jury.
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`Dated: January 17, 2017
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`YOUNG CONAWAY STARGATT & TAYLOR LLP
`/s/ Karen L. Pascale
`_____________________________
`Karen L. Pascale (#2903) [kpascale@ycst.com]
`Pilar G. Kraman (#5199) [pkraman@ycst.com]
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`Telephone: (302) 571-6600
`kpascale@ycst.com
`pkraman@ycst.com
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`OF COUNSEL:
`
`John R. Hutchins
`ANDREWS KURTH KENYON LLP
`1350 I Street NW, Suite 1100
`Washington, D.C. 20005
`Telephone (202) 662-2700
`Facsimile (202) 662-2739
`johnhutchins@andrewskurthkenyon.com
`
`Attorneys for Plaintiffs
`Fisher-Price, Inc. and Mattel, Inc.
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