neal et. al. v. cobb's diesel performance
TRANSCRIPT
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John D. Titus (#012912) Bradley P. Hartman (#017263) HARTMAN TITUS PLC 7114 E. Stetson Drive, Suite 205 Scottsdale, AZ 85251-3250 Phone: (480) 659-0019 Fax: (480) 659-3304 Email: [email protected] [email protected] Attorneys for Plaintiffs
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF ARIZONA
Gene Neal and Kennieth Neal, individuals, Plaintiffs, vs. Cobb’s Diesel Performance LLC, a Tennessee limited liability company dba Performance Machine & Mfg, Defendant.
No. COMPLAINT
(Patent Infringement)
For their complaint against Cobb’s Diesel Performance LLC dba Performance
Machine & Mfg. (“PMM”), plaintiffs Gene Neal and Kennieth Neal (collectively, “the
Neals”) allege as follows:
1. The Neals are citizens of the United States domiciled in Arizona doing
business as “Bulletproof Diesel” and having a business address at 4245 E. Palm St., Mesa,
Arizona 85215.
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2. On information and belief, Cobb’s Diesel Performance LLC is a Tennessee
limited liability company doing business as “Performance Machine & Mfg.” having an
address at 5890 Industrial Park Dr. Lenoir City, TN 37771.
3. This is an action arising under the Patent Laws of the United States, title 35 of
the United States Code. Original jurisdiction is predicated under 28 U.S.C. §§ 1332 and
1338. Venue in Arizona is proper under 28 U.S.C. §§ 1391 and 1400.
4. For many years, the Neals have been in the business of designing and
manufacturing aftermarket parts for vehicles, and in particular, aftermarket parts for diesel
powered vehicles, which the Neals market and sell under the brand Bulletproof Diesel™.
Bulletproof Diesel™ is widely recognized as the industry leader in aftermarket oil-cooler
relocation kits for diesel engines.
5. In or about July 2009, the Neals introduced an oil-cooler relocation kit for the
International VT365 engine also knows as the Ford® 6.0L Powerstroke Diesel. The
Bulletproof Diesel™ oil cooler relocation kit solved a serious reliability problem with the
original equipment oil cooler, the failure of which often led to coolant leaking into the
lubrication system of the engine with ruinous results.
6. Contemporaneous with the introduction of the Bulletproof Diesel™ oil cooler
relocation kit, the Neals applied for a provisional patent on the invention. The application,
titled "ENGINE OIL COOLER," was filed in the names of Gene Neal and Kennieth Neal on
July 23, 2009.
7. The aforementioned application was followed by a utility patent application of
the same name, filed on July 22, 2010. This application was allowed by the United States
Patent and Trademark Office, which issued the application as United States Patent No.
8,375,917 ("the '917 Patent") on February 19, 2013.
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8. The Neals are and have continuously been the owners of all right, title and
interest in and to the '917 Patent.
9. Prior to February 19, 2013, the Neals became aware of an oil cooler relocation
kit model #PMM60RMOC advertised by PMM on its web site
<www.performancemachinemfg.com> which appeared to infringe the ‘917 patent. A copy
of the sell page for the PMM60RMOC is attached hereto as Exhibit A.
10. After completing its investigation confirming its suspicions that the
PMM60RMOC infringed the '917 Patent, by letter dated February 19, 2013, the Neals
notified PMM that it believed the PMM60RMOC oil cooler relocation kit infringed the '917
Patent. A copy of the aforementioned letter is attached as Exhibit B hereto.
11. As of the date hereof, PMM is continuing to advertise the PMM60RMOC as
being scheduled to be released and, on information and belief, has no intent to cease its
manufacturing and sale.
12. As a result of PMM's infringement and continuing infringement of the '917
Patent, the Neals have suffered and will continue to suffer damage.
13. PMM's infringement of the '917 patent will continue unless enjoined by this
Court.
WHEREFORE the Neals pray that this court enter judgment:
A. Enjoining PMM and its related parents, subsidiaries, agents, officers, partners,
employees and all others acting in concert with it from the manufacture, importation,
use, offer for sale and sale of oil cooler relocation kits or parts thereof that infringe
United States Patent No. 8,375,917;
B. Ordering PMM to account for its profits and the damages to the Neals from
such infringement and awarding such profits and damages to the Neals;
C. Assessing costs and interest against PMM; and
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D. Granting such other relief as is just and proper.
DATED this 26th day of February, 2013.
HARTMAN TITUS PLC
By: s/ Bradley P. Hartman Bradley P. Hartman
John D. Titus 7114 E. Stetson Drive, Suite 205 Scottsdale, Arizona 85251-3250 Attorneys for Plaintiffs
EXHIBIT A
Remote O
il Cooler System for 6.0L Pow
erStroke by Performance M
achine & M
FG.
http://performancem
achinemfg.com
/i-11654020-remote-oil-cooler-system
-for-6-0l-powerstroke-by-perform
ance-machine-m
fg.html[2/26/2013 10:22:01 AM
]
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Ford 7.3 Ford IDI 90-93
Ford 7.3L Pow
erstroke 94-97
Ford 7.3L Pow
erstroke 99-03
Ford 6.0L Pow
erstroke 03-07
Ford 6.4L Pow
erstroke 08-10
Ford 6.7L Pow
erstroke 11-12
Ford F150- Ecoboost 2011-
2013
Dodge 5.9L C
umm
ins 89-93
Dodge 5.9L C
umm
ins 12V 94-
98Dodge 5.9L C
umm
ins 24V 98-
02Dodge 5.9L C
umm
ins 03-04
Dodge 5.9L C
umm
ins 04.5-07
Dodge 6.7L C
umm
ins 07.5-12
GM
6.5 Diesel 1994-2000
GM
6.6L Duram
ax LB7 01-04
GM
6.6L Duram
ax LLY 04.5-05
GM
6.6L Duram
ax LBZ
06-07
GM
6.6L Duram
ax LMM
07.5-10G
M 6.6L D
uramax LM
L 2011-2013
Mercedes B
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I3.0L
Jeep Liberty CR
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Remote O
il Cooler System for 6.0L Pow
erStroke by Performance M
achine & M
FG.
http://performancem
achinemfg.com
/i-11654020-remote-oil-cooler-system
-for-6-0l-powerstroke-by-perform
ance-machine-m
fg.html[2/26/2013 10:22:01 AM
]
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Perform
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. is pleased to announce the scheduled release of our Rem
ote Oil C
ooler System
for the 2003-2007 Ford P
owerS
troke 6.0L Diesel. P
MM
's PA
TEN
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EN
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G technology and extensive research has yielded the very first
remote oil cooler system
that will retain your O
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aintenance costs and not force you to call us everytime
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EXHIBIT B
7114 E. Stetson Drive ■ Suite 205 ■ Scottsdale, Arizona 85251-3250 ■ T. 480.659.0019 ■ F. 480.659.3304 www.hartmantitus.com
John D. Titus Registered Patent Attorney
Direct Dial: 480.659.6319
Direct Fax: 480.659.3304
February 19, 2013 Via e-mail <[email protected]> Copy via First Class Mail Performance Machine & Mfg. 5890 Industrial Park Dr. Lenoir City, TN 37771
Re: Neal Technologies, Inc. Intellectual Property Rights Enforcement Our File No.: 1317.5002
Dear Sirs: This law firm represents Neal Technologies, Inc. d/b/a Bulletproof Diesel and its principal inventors Ken Neal and Gene Neal regarding enforcement of intellectual property rights. It has come to our attention that Performance Machine & Mfg (hereinafter "PMM") is offering for sale and/or selling certain external oil cooler installation kits for the Ford® Powerstroke 6.0L Diesel engine including the external oil cooler kit PMM60RMOC advertised for sale on the website <www.performancemachinemfg.com>. Please be advised the PMM60RMOC oil cooler kit infringes US Patent 8,375,917 owned by Ken Neal and Gene Neal and licensed exclusively to Bulletproof Diesel. A copy of US Patent 8,375,917 is attached hereto for your reference. According to US patent laws, aggrieved parties, such as Bulletproof Diesel, are entitled to damages and injunctive relief to preclude the importation, manufacture, sale, offer for sale, or use of a device that infringes a United States patent. Moreover, any continued infringement after receipt of this notice may be considered willful infringement, entitling Bulletproof Diesel to recover treble damages and attorneys’ fees. Bulletproof Diesel hereby demands that you IMMEDIATELY DISCONTINUE all acts that infringe Bulletproof Diesel’s patent rights. PMM must immediately discontinue all advertising of the PMM60RMOC oil cooler kit including but not limited to all web advertising. All inventories of the PMM60RMOC in PMM’s possession or control should be secured, prepared for shipment and delivered to Bulletproof Diesel by February
PMM February 19, 2013 Page 2 28, 2013. In the interim, PMM shall make all subject inventories available for inspection by Bulletproof Diesel upon reasonable notice. PMM shall NOT return or transfer any of the PMM60RMOC oil cooler kits or components to its supplier(s) or others. Any PMM60RMOC oil cooler kits or parts thereof currently en route from any supplier(s) (by sea, air or ground) should be securely stored immediately upon delivery to PMM. Any such shipments must be shipped to Bulletproof Diesel within three days of receipt by PMM.
Additionally, on or before February 28, 2013 PMM shall:
1. Confirm in writing that PMM has ceased handling, either directly or indirectly, all PMM60RMOC oil cooler kit and/or components (hereinafter referred to collectively as the “PRODUCTS”) as of the date of receipt of this letter. “Handling” includes, but is not limited to, manufacturing, importing (into the United States), using, selling, or offering to sell within the United States.
2. Identify all past and present suppliers of the PRODUCTS. Full disclosure is
required, including all domestic and foreign based manufactures, exporters or distributors.
3. Deliver to the undersigned all documents including invoices and purchase
orders regarding purchases, importation, sales and/or distribution of the PRODUCTS by PMM.
Should you fail to provide written confirmation of your intent to comply fully with the terms herein by February 28, 2013, Bulletproof Diesel may take any and all action it deems appropriate up to and including filing a complaint in the United States District Court. This letter is being sent in an attempt to achieve prompt and informal resolution of this matter and is privileged as such under Fed. R. Evid. 408 and other law. Nothing contained herein or omitted herefrom is intended to or should be deemed an admission of any fact or a waiver of any right or defense, all of which are expressly reserved. You are also advised that you should consult with your counsel regarding preservation of electronic records as spoliation of any evidence material to this matter may be punishable by applicable law. If you have any questions or need instructions regarding how to comply with the foregoing, please have your attorney contact me. Thank you.
