Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA772264
`09/22/2016
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92064459
`
`Defendant
`TASER International, Inc.
`
`TASER INTERNATIONAL INC
`17800 NORTH 85TH STREET
`SCOTTSDALE, AZ 85255
`UNITED STATES
`Motion to Suspend for Civil Action
`
`Ryan T. Santurri
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`rsanturri@addmg.com
`
`/s/Ryan T. Santurri
`
`09/22/2016
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`Attachments
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`Motion to Stay Cancellation.pdf(2734300 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Phazzer Electronics, Inc.
`
`
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`
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`v.
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`
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`TASER International, Inc.,
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`Petitioner,
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`Respondent.
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`
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`Cancellation Action No.: 92064459
`Involving U.S. Registration No. 4,423,789
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`RESPONDENT’S MOTION TO SUSPEND PROCEEDINGS PENDING THE
`OUTCOME OF FIRST-FILED FEDERAL COURT LITIGATION
`
`
`
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`Respondent TASER International, Inc. (“TASER”), hereby moves the Trademark Trial
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`and Appeal Board (“Board”) to suspend this cancellation proceeding pending the outcome of a
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`civil action involving TASER and Petitioner Phazzer Electronics, Inc. (“Phazzer”) pending in the
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`U.S. District Court for the Middle District of Florida, Orlando Division, Case No. 6:16-cv-
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`00366-PGB-KRS. (A true and correct copy of the Complaint is attached hereto as Exhibit A).
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`Specifically, the civil action was filed six months ago by TASER against the Petitioner and
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`another defendant, and the claims unquestionably bear on the issues presented to the Board in the
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`Petition, and would likely resolve them in their entirety. TASER, the Plaintiff in the civil action,
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`alleges claims of infringement of the trademark at issue in this cancellation action, along with
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`claims of patent infringement, false advertising and unfair competition against Petitioner and one
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`other defendant.
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`It is the policy of the Board to suspend cancellation proceedings when the parties are
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`involved in a civil action which may be dispositive of or have a bearing on the Board’s
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`proceedings. TBMP §510.02, citing 37 C.F.R. § 2.117(a); see also New Orleans Louisiana Saints
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`LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011)(civil action
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`

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`need not be dispositive of Board proceeding, but only needs to have bearing on issues before the
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`Board); General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB 1992);
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`Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB 1975); Tokaido v. Honda
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`Associates, Inc., 179 USPQ 861 (TTAB 1973). This policy makes perfect sense. When a civil
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`action in a federal district court involves issues in common with those in a proceeding before the
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`Board, the decision of the district court is often binding on the Board, while the status of the
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`Registration – even if it were cancelled – does not preclude TASER from asserting its trade dress
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`infringement claims under common law. See TBMP § 510.02(a); Goya Foods Inc. v. Tropicana
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`Products Inc., 846 F.2d 848 (2d Cir. 1988) (PTO registration would not affect the legal standard
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`applied in infringement claim or the scope of the required fact-finding; the district court will still
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`independently have to determine the validity of the mark). While the Supreme Court recently
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`found that TTAB decisions can be binding on a federal court (B&B Hardware Inc. v. Hargis
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`Industries, 135 S.Ct. 1293, 1310 (2015)), under no circumstances could this Board’s decision
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`resolve all issues in the pending federal litigation, which encompass patent claims and common
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`law rights not involved in this proceeding. As such, there is no reason for the parties or the Board
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`to spend time and resources on this dispute when the resolution at the Board will not resolve the
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`first-filed federal litigation between the same parties.
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`
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`In the pending litigation, the district court and the jury will be charged with determining
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`issues relating to U.S. Registration No. 4,423,789, including any defenses that may be asserted1;
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`therefore the outcome of the civil action will directly impact and likely resolve all issues
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`involved in this opposition proceeding. In particular, two of the purported grounds for
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`cancellation set forth in the petition – functionality and lack of secondary meaning – are
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`1 Currently pending is a motion to dismiss by the Petitioner, which has delayed Petitioner’s
`requirement to answer the complaint or articulate its affirmative defenses.
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`
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`2
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`

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`elements that or defenses will be litigated in the infringement litigation. See Epic Metals v.
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`Souliere, 99 F.3d 1034, 1038 (11th Cir. 1996). The third purported ground for cancellation,
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`fraud, is a theory that is fatally flawed and insufficient, but Petitioner is nonetheless able to
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`allege in the civil action. Alternatively, the issues of patent infringement, false advertising and
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`trademark infringement based on common law rights will also be resolved at the federal court
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`level, while none of these issues would be impacted by this cancellation action.
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`
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`Equitable considerations also favor suspension of the opposition proceeding because
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`conducting two trials involving the same parties and the same issues will undoubtedly result in
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`duplication of effort and expense. There is also the potential that simultaneous proceedings on
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`these issues could result in inconsistent results. Accordingly, TASER respectfully requests that
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`the Board suspend these cancellation proceedings until final disposition of the civil action noted
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`above.
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`
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`Respectfully submitted this September 22, 2016.
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`
`
`
`
`
`/s/Ryan T. Santurri
`Ryan T. Santurri, Esquire
`Florida Bar No. 015698
`rsanturri@addmg.com
`Brock Hankins, Esquire
`Florida Bar No. 112531
`rhankins@addmg.com
`Allen, Dyer, Doppelt, Milbrath & Gilchrist P.A.
`255 South Orange Avenue
`Suite 1401
`Orlando, FL 32801
`Telephone: (407) 841-2330
`Facsimile: (407) 841-2343
`Attorney for TASER International, Inc.
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`3
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`

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`I hereby certify that a true and complete copy of the foregoing (Motion to Stay) has been
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`CERTIFICATE OF SERVICE
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`served by mailing said copy on September 22, 2016, via First Class Mail, postage prepaid to:
`
`
`Adam R. Stephenson
`Adam R. Stephenson, LTD.
`40 W. Baseline Rd., Ste 101
`Tempe, AZ 85283
`Tel: 480.264.6075
`Fax: 480.718.8336
`ipdocket@iptech.law
`adam@iptech.law
`
`
`
`/s/Ryan T. Santurri
`Ryan T. Santurri, Esquire
`
`Date: September 22, 2016
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`4
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`

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`EXHIBIT “A”
`EXHIBIT “A”
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`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 1 of 15 PageiD 1
`FILED
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`2016 MAR -2 PM 2: t.O
`
`I . ｾ＠
`..,
`HIOU:..L .,.
`:>•r·
`ORLAitU·.:. : L
`
`T ASER INTERNATIONAL, INC.,
`
`Case No.: l.a-ＧＮＨＨＬＭＭｃｶｾ＠ＳｾｻＮＬﾷＭＰｕｾ＠ＴＰｾ＠
`
`Plaintiff,
`
`v.
`
`PHAZZER ELECTRONICS, INC.; and SANG
`MIN INTERNATIONAL CO., LTD.,
`
`Defendants.
`
`COMPLAINT AND DEMAND FOR JURY TRIAL
`
`Plaintiff T ASER International, Inc. ("T ASER"), by and through its undersigned
`
`attorneys, sues Defendants Phazzer Electronics, Inc., and Sang Min International Co., Ltd.,
`
`and alleges as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`This is a civil action arising under 35 U.S.C. § 271 for patent infringement and
`
`15 U.S.C. § 1114 et seq. for false advertising and trademark infringement.
`
`2.
`
`This Court has jurisdiction over the patent, trademark and false advertising
`
`claims pursuant to 28 U.S.C. §§ 1331 and 1338, and supplemental jurisdiction over the
`
`common law trademark and unfair competition claims pursuant to 28 U.S.C. § 1367(a).
`
`3.
`
`Jurisdiction is also proper because the matter in controversy exceeds $75,000.00
`
`exclusive of interests, fees and costs, and the named Plaintiff and Defendants are citizens of
`
`different states or countries. 28 U.S.C. § 1332(d)(2)(A).
`
`4.
`
`Venue is proper in this Court pursuant to 28 U.S.C. § 1391 because a substantial
`
`part of the events giving rise to the claim occurred within this judicial district, and because
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 2 of 15 PageiD 2
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`Defendants have marketed and sold the products at issue in this action within this judicial
`
`district, and either maintain their principal place of business in this judicial district or have
`
`done business within this judicial district.
`
`PARTIES
`
`5.
`
`Plaintiff T ASER is a Delaware corporation with its principal place of business
`
`at 17800 N. 85th Street, Scottsdale, Arizona 85255.
`
`6.
`
`Defendant Phazzer Electronics, Inc. ("Phazzer") is a Delaware corporation
`
`with its principal place of business at 808 N. Hoagland Boulevard, Kissimmee, Osceola
`
`County, Florida.
`
`7.
`
`Upon information and belief, Defendant Sang Min International Co., Ltd.
`
`("Sang Min") is a corporation organized and existing in the Republic of China with its
`
`principal place of business at No. 339 Cheng Kung Rd., Feng Yuan District, Tai Chung,
`
`Taiwan 420.
`
`NATURE OF THE DISPUTE
`
`8.
`
`T ASER manufactures and sells conducted electrical weapons ("CEWs")
`
`commonly known as "stun guns."
`
`9.
`
`Beginning in the first quarter of2003, TASER has continuously manufactured
`
`and sold the model X26™ CEW.
`
`10.
`The TASER model X26 CEW utilizes a compressed gas cartridge to propel two
`probes, also referred to as darts, at high velocity toward a target. Each of the two probes is
`
`connected by a thin insulated wire to a battery-powered high voltage circuit located within the
`
`CEW. Upon impact of the two probes with the target, a complete electrical circuit is
`
`established and a low current electrical charge flows through the target.
`
`2
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 3 of 15 PageiD 3
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`11.
`
`The T ASER model X26 CEW is designed to use electrical stimuli to interfere
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`with the signals sent by the command and control systems of the body to temporarily impair
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`the subject's ability to control his own body.
`
`12.
`
`The TASER model X26 CEW 1s sold only to
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`law enforcement and
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`professional security personnel. A similar model, the X26C CEW, is sold to the consumer
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`market.
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`13.
`
`The T ASER model X26 CEW has been well received in the marketplace
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`resulting in delivery of tens of thousands of units since its introduction in 2003.
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`14.
`
`TASER is the largest supplier of dart firing CEWs. TASER CEWs are used by
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`more than 17,800 law enforcement agencies in 107 countries. Every TASER CEW is
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`manufactured in Arizona.
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`15.
`
`TASER is the sole owner of US utility patent 7,234,262 (the "'262 patent") by
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`assignment from the sole inventor as recorded in the United States Patent and Trademark
`
`Office at reel 016843 frame 0004. The '262 patent was granted to T ASER on June 26,
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`2007. A copy of the '262 patent is attached as Exhibit A and incorporated herein by
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`reference.
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`16.
`
`San Min manufactures and sells CEWs.
`
`17.
`
`Phazzer imports CEWs manufactured by Sang Min and sells them in the United
`
`States and elsewhere.
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`18.
`
`Upon infonnation and belief, San Min utilizes Phazzer as its U.S. distributor and
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`sells CEWs to Phazzer knowing they will be resold in the U.S.
`
`19.
`
`Phazzer and T ASER offer competitive CEW s for sale.
`
`20.
`
`Since about April 2010, with Sang Min's knowledge and consent, Phazzer has
`
`offered for sale in the United States a CEW marketed as the "Enforcer." The Enforcer is a
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`hand-held weapon that launches two darts to stun a target.
`
`3
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 4 of 15 PageiD 4
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`21.
`
`On infonnation and belief, the Enforcer is offered for sale to the general
`
`public.
`
`22.
`
`Phazzer hosts a website on the Internet accessible to Internet users without
`
`user registration or a password. The Phazzer websites have the following URLs
`
`http://www.phazzer.com ("Phazzer Corporate Website") and http://www.phazzerstore.com
`
`("Phazzer E-commerce Website").
`
`23.
`
`The Phazzer websites include a technical specification of the Enforcer CEW
`
`(Exhibit B), a comparison between the Enforcer CEW and the T ASER X26 CEW (Exhibit
`
`g ("Enforcer-T ASER Comparison"), and a manual for the Phazzer Enforcer CEW (Exhibit
`
`Q). Copies of Exhibits B - D are attached and incorporated herein by reference.
`
`24.
`
`Upon infonnation and belief, Phazzer has imported, offered for sale, and sold
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`the Enforcer CEW to customers in Florida and elsewhere in the U.S. Such importation,
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`offer for sale, and sales of the Phazzer Enforcer infringes claim 13 ofTASER's '262 utility
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`patent. On infonnation and belief, other claims of the '262 patent are also infringed.
`
`25.
`
`The Phazzer websites further include a support page that provides access to
`
`various manuals, including the Phazzer Dataport Manual (Exhibit E). The Phazzer Dataport
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`Manual describes the type of data stored by the Enforcer CEW and transferred from the
`
`Enforcer CEW to a computer. A copy of Exhibit E is attached and incorporated herein by
`
`reference.
`
`26. On infonnation and belief, Phazzer's Enforcer CEWs include non-volatile
`
`memory that stores infonnation regarding the weapon's past use. The stored infonnation
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`appears to record the date and time of each operation of the trigger and the duration of the
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`stimulus signal provided by the Enforcer. The Phazzer Dataport Manual accessible on the
`
`Phazzer websites is version 01-07/20/2013, which suggests the Enforcer CEW has been
`
`storing and providing usage infonnation since at least July 20, 2013.
`
`4
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`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 5 of 15 PageiD 5
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`27. As the manufacturer of Phazzer's Enforcer CEW, Sang Min has express
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`knowledge of the weapon's data storage feature and specifications.
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`28. On information and belief, Sang Min is currently manufacturing and Phazzer
`
`is currently importing, using, and selling the Phazzer Enforcer CEW with Sang Min's
`
`knowledge and consent.
`
`29.
`
`Phazzer and its distributors and agents' advertising claims are understood
`
`within the relevant market as comparing Phazzer's CEWs with the well-known TASER
`
`CEWs.
`
`30.
`
`The Enforcer-T ASER Comparison document (Exhibit C) makes statements
`
`that are not true. The left most column of the Enforcer-T ASER Comparison document
`
`identifies the CEW feature being compared. The feature entitled "Battery Operation:
`
`Strength of Charge Readout" states, "The T ASER® X26 battery digital readout must be
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`continuously monitored while in use to assure maximum discharging has not been reached."
`
`This statement is false.
`
`31.
`
`The feature entitled "Battery Operation: Monitoring Capabilities" in the
`
`Enforcer-T ASER Comparison document states, "Most agencies' policies
`
`require
`
`replacement once the battery reaches 70% or less. So in summary each agency pays X
`
`amount of money to use only 30% of a Taser battery." This statement is false.
`
`32.
`
`The feature entitled "Operation Simplicity: Ease of Use and Control" in the
`
`Enforcer-TASER Comparison document states, "TASER® utilizes digital readout to monitor
`
`power operation and must be monitored by the officer during operation. This extra mental
`
`juggling to operate the Taser exposes officers to potential loss of sight of the perpetrator."
`
`This statement is false.
`
`33.
`
`The feature entitled "Operation Simplicity: Ease of Use and Control" in the
`
`Enforcer-TASER Comparison document states, "T ASER® offers illuminator selector button
`
`5
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`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 6 of 15 PageiD 6
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`with 4 switch positions to operate the CID, the laser and flashlight both on and off in
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`sequence leaving a substantial margin for error by drawing the officer's attention away from
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`the perpetrator." This statement is false.
`
`34.
`
`T ASER is the owner of a federal trademark registration, Registration No.
`
`4,423,789, issued by the United States Patent and Trademark Office on October 29, 2013,
`
`fbr the non-functional shape, as shown below, of cartridges used to launch darts ("TASER
`
`Trademark"). The registration certificate is attached as Exhibit F and incorporated herein by
`
`reference.
`
`Ｌ ｾＩ＠
`·t •, I
`II
`'I
`'I
`
`' '
`
`35.
`
`The TASER Trademark has been used since January 31, 1995. The TASER
`
`Trademark distinguishes TASER's cartridges and is well known to users and purchasers of
`
`CEWs as identifying T ASER merchandise.
`
`36. On information and belief, Sang Min manufactures CEW cartridges for
`
`Phazzer that bear a confusingly similar shape to the T ASER Trademark, including the
`
`cartridge depicted below. Phazzer imports these cartridges into the United States, and offers
`
`for sale and sells the cartridges in interstate commerce with Sang Min's knowledge and
`
`consent.
`
`6
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`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 7 of 15 PageiD 7
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`37.
`
`Phazzer presently sells through the Phazzer £-commerce Website several
`
`versions of cartridges that each bear a confusingly similar shape to the shape of the T ASER
`
`Trademark.
`
`38.
`
`The cartridges imported, distributed, offered for sale, and sold by Phazzer are
`
`not manufactured by T ASER, and neither Phazzer nor Sang Min are associated or connected
`
`with T ASER or licensed, authorized, sponsored, endorsed, or approved by T ASER in any
`
`way.
`
`39.
`
`TASER used the TASER Trademark extensively and continuously before
`
`Sang Min and Phazzer began using confusingly similar imitations ofTASER's cartridges.
`
`40.
`
`The cartridges sold by Phazzer are similar to and compete with goods sold by
`
`T ASER, and the goods sold by both parties are sold through overlapping channels of trade.
`
`41.
`
`Phazzer's use of confusingly similar imitations of the TASER Trademark is
`
`likely to deceive, confuse, and mislead prospective purchasers into believing that cartridges
`
`sold by Phazzer are manufactured by, authorized by, or in some manner associated with
`
`T ASER. They are not. The likelihood of confusion, mistake, and deception engendered by
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`7
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`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 8 of 15 PageiD 8
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`Sang Min and Phazzer's misappropriation of the TASER Trademark is causing and will
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`continue to cause irreparable harm to the goodwill symbolized by the T ASER Trademark
`
`and the reputation for quality that the T ASER Trademark represents.
`
`42.
`
`Phazzer's activities are likely to cause confusion before, during, and after the
`
`time of purchase because purchasers, prospective purchasers, and others viewing Phazzer's
`
`cartridges are likely to mistakenly attribute Phazzer's cartridges to TASER.
`
`43. On information and belief, Sang Min and Phazzer knowingly, willfully,
`
`intentionally, and maliciously adopted and used confusingly similar imitations of the
`
`T ASER Trademark.
`
`COUNT ONE
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`INFRINGEMENT OF THE '262 PATENT
`
`(Phazzer and Sang Min)
`
`44.
`
`TASER realleges and incorporates by reference the previous paragraphs of
`
`this Complaint inclusive, as though fully set forth herein.
`
`45.
`
`Count One arises under 35 U.S.C. § 271.
`
`46.
`
`Through
`
`their commercial activities regarding
`
`the Phazzer Enforcer,
`
`Defendants directly infringe the '262 patent.
`
`4 7.
`
`Through
`
`their commercial activities regarding
`
`the Phazzer Enforcer,
`
`Defendants infringe the '262 patent under the doctrine of equivalents.
`
`48.
`
`Defendants' commercial activity constitutes contributory infringement of the
`
`'262 patent.
`
`49. Defendants' infringement was without license from TASER and was willful
`
`and deliberate.
`
`50. On information and belief, Defendants' acts of infringement damaged and will
`
`continue to damage T ASER, causing irreparable harm, for which there is no adequate
`
`8
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 9 of 15 PageiD 9
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`remedy at law. Such unlawful acts and damage will continue to occur unless enjoined by
`
`this Court.
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`51.
`
`Defendants' acts of infringement have been carried out deliberately and
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`willfully entitling TASER to treble damages under 35 U.S.C. § 284. This is an exceptional
`
`case entitling TASER to an award of attorneys' fees under 35 U.S.C. § 285.
`
`COUNT TWO
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`FALSE ADVERTISING UNDER 15 U.S.C. § 1125 (A)
`
`(Phazzer Only)
`
`52.
`
`T ASER realleges and incorporates by reference the previous paragraphs of
`
`this Complaint inclusive, as though fully set forth herein.
`
`53.
`
`Count Two arises under 15 U.S.C. § 1125(a).
`
`54.
`
`Phazzer has made and
`
`incorporated false statements of fact
`
`into
`
`its
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`commercial advertisements for the Enforcer CEW product and has communicated publicly
`
`false statements about T ASER and its products.
`
`55.
`
`The statements made by Phazzer on its website and in its advertising were
`
`made for the purpose of influencing consumers to buy Phazzer' s goods.
`
`56.
`
`The false statements of fact either have actually deceived or have a tendency
`
`to deceive a substantial segment ofPhazzer's audience. Such deception is material in that it
`
`is likely to influence purchasing decisions.
`
`57.
`
`Phazzer has caused its false statements to enter interstate commerce. As a
`
`result of Phazzer's conduct, TASER has been or is likely to be injured as a result of
`
`Phazzer's false statements in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a).
`
`9
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`

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`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 10 of 15 PageiD 10
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`COUNT THREE
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`TRADEMARK INFRINGEMENT
`
`(Phazzcr and Sang Min)
`
`58.
`
`TASER realleges and incorporates by reference the previous paragraphs of
`
`this Complaint inclusive, as though fully set forth herein.
`
`59.
`
`Defendants' use of confusingly similar imitations of the T ASER Trademark is
`
`likely to cause confusion, deception, and mistake by creating the false and misleading
`
`impression that Phazzer cartridges are manufactured or distributed by T ASER, are
`
`associated or connected with T ASER, or have the sponsorship, endorsement, or approval of
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`TASER.
`
`60.
`
`Defendants have used marks confusingly similar to TASER's federally
`
`registered mark in violation of 15 U.S.C. § 1114. Defendants' activities have caused and,
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`unless enjoined by this Court, will continue to cause a likelihood of confusion and deception
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`of members of the trade and public, and will injure TASER's goodwill and reputation as
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`symbolized by the federally registered T ASER Trademark, for which T ASER has no
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`adequate remedy at law.
`
`61.
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`Defendants' actions demonstrate an intentional, willful, and malicious intent
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`to trade on the goodwill associated with the TASER Trademark to TASER's irreparable
`
`InJUry.
`
`62.
`
`Defendants have caused and are likely to continue to cause substantial injury
`
`to the public and to T ASER, such that T ASER is entitled to injunctive relief and to recover
`
`T ASER' s profits, actual damages, enhanced profits, and damages, costs, and reasonable
`
`attorneys' fees under 15 U.S.C. §§ 1114- 1117.
`
`10
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 11 of 15 PageiD 11
`
`COUNT FOUR
`
`COMMON LAW TRADEMARK INFRINGEMENT
`
`AND UNFAIR COMPETITION
`
`(Phazzcr and Sang Min)
`
`63.
`
`T ASER realleges and incorporates by reference the previous paragraphs of
`
`this Complaint inclusive, as though fully set forth herein.
`
`64. Defendants' acts constitute common law trademark infringement and unfair
`
`competition, and have created and will continue to create a likelihood of confusion to the
`
`irreparable injury of T ASER unless restrained by this Court. T ASER has no adequate
`
`remedy at law for this injury.
`
`65. On information and belief, Defendants have acted with full knowledge of
`
`T ASER' s use of, and statutory and common-law rights to, the T ASER Trademark and
`
`without regard to the likelihood of confusion of the public created by their activities.
`
`66.
`
`Defendants' actions demonstrate an intentional, willful, and malicious intent
`
`to trade on the goodwill associated with the T ASER Trademark to the great and irreparable
`
`injury ofT ASER.
`
`67. As a result of Defendants' acts, T ASER has been damaged in an amount not
`
`yet determined or ascertainable. At a minimum, however, TASER is entitled to injunctive
`
`relief, to an accounting of Defendants' profits, to damages, and to costs.
`
`68.
`
`Further, because Defendants' intentional misconduct or gross negligence is a
`
`substantial cause of TASER's loss, injury or damage, TASER is entitled to punitive
`
`damages.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, T ASER respectfully requests that this Court enter judgment in its
`
`favor and against Defendants as follows:
`
`II
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 12 of 15 PageiD 12
`
`I.
`
`For a declaration that the Phazzer Enforcer CEW is within the scope of the
`
`claims of the '262 patent;
`
`2.
`
`For a permanent injunction prohibiting infringement, including making, using,
`
`importing, offering for sale, and selling the Phazzer Enforcer CEW, as provided by 35
`
`u.s.c. § 283;
`
`3.
`
`4.
`
`For a permanent injunction prohibiting Phazzer's false advertising practices;
`
`For a permanent injunction prohibiting infringement, including making, using,
`
`importing, offering for sale, and selling Phazzer cartridges that infringe on TASER's
`
`Trademark;
`
`5.
`
`For an order stating that Defendants shall file a written report with the Court,
`
`under oath, setting forth their compliance with all injunctive relief granted;
`
`6.
`
`For compensatory damages together with interest and costs for patent
`
`infringement as provided by 35 U.S.C. § 284;
`
`7.
`
`For compensatory damages in an amount sufficient to compensate TASER for
`
`the injuries proximately caused by Defendants' conduct;
`
`8.
`
`For treble damages as provided by 35 U.S.C. § 284 and 15 U.S.C. § 1117(a)
`
`for Defendants' willful and deliberate infringement and Phazzer's false advertising;
`
`9.
`
`For punitive damages in an amount sufficient to deter Defendants and any
`
`others similarly situated from engaging in such misconduct in the future;
`
`10.
`
`For attorneys' fees and costs pursuant to applicable law, including, without
`
`limitation, 35 U.S.C. § 285 and 15 U.S.C. § 1117(a).
`
`11.
`
`For an order stating that Defendants shall completely and immediately furnish
`
`all information in their possession, custody or control that relates in any way to responses to
`
`Phazzer's sales and offers of sale of the Enforcer CEW in the United States and Florida; and
`
`12.
`
`For such other and further relief as the Court deems just and proper.
`
`12
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 13 of 15 PageiD 13
`
`REQUEST FOR MARKMAN HEARING
`
`T ASER asks the Court to schedule a Markman Hearing for claim construction in this
`
`T ASER reserves its right to have all issues that are triable by a jury so decided in this
`
`JURY DEMAND
`
`case.
`
`case.
`
`DATED this 2nd day of March, 20 16.
`
`Respectfully submitted,
`
`Is/ Michael J. Roper ｾ＠0 ｾｾ＠
`
`w ｾｾＱＢ＠
`
`Michael J. Roper, Esquire
`Florida Bar No. 0473227
`Bell & Roper, P.A.
`2707 E. Jefferson Street
`Orlando, FL 32803
`Telephone: (407) 897-5150
`Facsimile: ( 407) 897-3332
`mroper@bellroperlaw.com
`Secondary: phermosa@bellroperlaw.com
`T ASER
`Trial
`Counsel, Attorney
`for
`International, Inc.
`
`Is/ D. Lawrence Letham
`D. Lawrence Letham. Esquire (pro hac vice
`pending)
`Arizona Bar No. 024727
`9588 E. Southern Avenue #51390
`Mesa, AZ 85208
`Telephone: (602) 904-5402
`Facsimile: 480-905-2027
`LLetham@LethamLF.com
`Letham Law Firm LLC
`Attorney for T ASER International, Inc.
`
`13
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 14 of 15 PageiD 14
`
`Is/ Pam Petersen
`Pamela B. Petersen, Esquire (pro hac vtce
`pending)
`Arizona Bar No. 011512
`T ASER International, Inc.
`17800 N. 85th Street
`Scottsdale, AZ 85255-9603
`Telephone: (623) 533-3875
`Facsimile: ( 480) 905-2027
`ppetersen@taser.com
`Secondary: legal@taser.com
`Attorney for TASER International, Inc.
`
`14
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1 Filed 03/02/16 Page 15 of 15 PageiD 15
`
`INDEX OF EXHIBITS
`
`Exhibit A:
`Exhibit B:
`Exhibit C:
`Exhibit D:
`Exhibit E:
`Exhibit F:
`
`U.S. Patent 7,234,262
`Enforcer CEW Technical Specifications
`Comparison between the Enforcer CEW and the TASER X-26 CEW
`Enforcer CEW Manual
`Phazzer Dataport Manual
`TASER trademark registration certificate
`
`15
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1-1 Filed 03/02/16 Page 1 of 16 PageiD 16
`
`ExbibitA
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1-1 Filed 03/02/16 Page 2 of 16 PageiD 17
`
`I ＱＱｾＱ＠ｾＡｉｉｉｬｩ＠ｾ＠IIIII ｄｾ＠1011 m1 ｾｾｾ＠IIIII ｄｾ＠IIIII 111111 1111 ｾｉｉｉｉｉ＠
`
`US007234262B2
`
`(12) United States Patent
`Smith
`
`(10) Patent No.:
`(45) Date of Patent:
`
`US 7,234,262 B2
`Jun.26,2007
`
`(54) ELECTRICAL WEAPON ｉｉａｖｉｾｇ＠
`CONTROLLER FOR TIMED CURRENT
`THROUGH TARGET AND DATEfi'IME
`RECORDING
`
`(58) Field of Classification Search ................. 42/1.08,
`42/84; 3161232; 89/1.11; 463/47.3; 102/502;
`361/232
`See application file for complete search history.
`
`(75)
`
`Inventor: Patrick W. Smith, Soonsdale, 1\Z (US)
`
`(73) Assignee: TASER International, Inc., Scottsdale,
`AZ (US)
`
`( • ) Notice:
`
`Subject to any disclaimer, the tenn of this
`patent is extended or adjusted under 35
`U.S.C. 154(b) by 27 days.
`
`(21) Appl. No.: 111164,710
`
`(22) Filed:
`
`Dee. 2, 2005
`
`(65)
`
`Prior Publication Data
`
`US 2007/0097592 AI May 3, 2007
`
`Related U.S. Application Data
`
`(60) Division of application No. 10/673,901, filed on Sep.
`28, 2003, now Pat. No. 7,075,770, which is a con(cid:173)
`tinuation of application No. 10/016,082, filed on Dec.
`12, 2001, now Pat. No. 6,636,412, which is a con(cid:173)
`tinuation of application No. 09/398,388, filed on Sep.
`17, 1999, now abandoned.
`
`(51)
`
`Int. Cl.
`F42B 12102
`(2006.01)
`(52) U.S. Cl. . ........................ 42/84; 3611232; 463/47.3;
`89/1.11; 102/502
`
`(56)
`
`References Cited
`
`U.S. PXfENT DOCUMENTS
`
`4,541,191 A •
`5,193,048 A •
`5,786,546 A
`5,831,199 A •
`6,237,461 81
`6,4n,80I Bl
`6,636,412 82.
`6,999,295 82 •
`7,075,770 81 •
`7,100,437 82.
`7,158,362 82.
`2005/0039628 AI •
`
`9/1985 Morris et al ................. 42/1.01
`3/1993 Kaufman et al ............ 3611232
`111998 Simson
`11/1998 McNulty et al. ....... .. .... 8911.11
`512001 Poole
`1112002 O'dwyer
`10/2003 Smith ......................... 3611232
`212006 Watkins et al .............. 3611232
`112006 Smith ......................... 3611232
`912006 Johnson et al ................ 73/167
`112007 Smith ......................... 3611232
`2/2005 Carnun ...................... 102/502
`
`• cited by examiner
`
`Primary• Examiner-J. Woodrow Eldred
`(74) Attorney, Agenl, or Finn-William R. Bachand
`
`(57)
`
`ABSTRACT
`
`An appamtus for interfering with locomotion by a human or
`animal target includes a microprocessor programmed to
`track date and time, to initiate and maintain for a period an
`electrical current, and to record lr.lcked date and time for
`each initiation of the current. The current, when conducted
`through the target, interferes with use by the target of the
`skeletal muscles of the target during the period.
`
`18 Claims, 9 Drawing Sheets
`
`30"
`
`31
`
`32 ..
`
`I
`
`18
`
`20
`A - - - - - .
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1-1 Filed 03/02/16 Page 3 of 16 PageiD 18
`
`U.S. Patent
`
`Jun.26,2007
`
`Sheet 1 of 9
`
`US 7,234,262 B2
`
`ＳＰｾ＠
`
`31
`
`ＮｾＭＭＭＭ..
`35 .. ::
`:
`
`I
`I
`
`t
`I
`
`I
`I
`I
`
`I
`I
`I
`
`• ....... __ :
`
`18
`
`A - - - - - .
`
`FIG. 1
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1-1 Filed 03/02/16 Page 4 of 16 PageiD 19
`
`U.S. Patent
`
`Jun.26,2007
`
`Sheet 2 of 9
`
`US 7,234,262 B2
`
`30 ,
`
`TRIGGER
`
`34
`
`11
`
`MICROPROCESSOR
`
`POWER
`
`SWITCH
`
`TRANSFORMER
`
`CAPACITOR
`
`TRANSFORMER
`
`16
`
`18
`
`WIRE
`
`25
`
`\J\JIRE
`
`
`
`MOTIVE POWER ｾ＠DART
`
`DART
`
`TISSUE
`
`FIG. 2
`
`32
`
`12
`
`13
`
`15
`
`14
`
`2 1
`
`2 0
`
`19
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1-1 Filed 03/02/16 Page 5 of 16 PageiD 20
`
`U.S. Patent
`
`Jun.26,2007
`
`Sheet 3 of 9
`
`US 7,234,262 B2
`
`PULSE
`AMPLITUDE
`(mARMS)
`
`PULSE
`WIDTH
`ＨｾｓｅｃＩ＠
`
`BRAND
`
`JAYCOR SS
`
`ZFORCE I
`
`Z FORCE Ill
`
`ZFORCEIV
`
`TP65kV
`
`TP120kV
`
`MYOTRON
`
`Om120kV
`
`OmlSOkV
`
`OmSB
`
`42.0
`
`29.0
`
`31.9
`
`25.3
`
`26.8
`
`25.7
`
`64.7
`
`38.2
`
`29.6
`
`29.8
`
`1.00
`
`1.60
`
`1.69
`
`1.81
`
`2.07
`
`3.03
`
`3.20
`
`6.17
`
`7.13
`
`7.52
`
`13.00
`
`INVENTION
`
`162.48
`
`FIG. 3
`
`

`

`Case 6:16-cv-00366-PGB-KRS Document 1-1 Filed 03/02/16 Page 6 of 16 PageiD 21
`
`U.S. Patent
`
`Jun.26,2007
`
`Sheet 4 of 9
`
`us 7,234,262 82
`
`TRIGGER
`
`34
`
`11
`
`MICROPROCESSOR
`
`32
`
`12
`
`POWER
`
`SWITCH
`
`80
`
`81
`
`ＭＭＭＭＭＭＭＭＭＭＭＭｾＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭｾＭ［＠I ＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭＭｾＭＭＭＭＭＭＭＭＭＭＭＭＭ
`I so:
`
`5 1
`
`TRANSFORMER
`
`TRANSFORMER
`
`CAPACITOR
`
`TRANSFORMER