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United States District Court for the Eastern District of Michigan Southern Division 2:09-cv-12102-GER-DAS Doc # 36 Filed 05/23/11 Pg 1 of 31 Pg ID 510 UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION WARRIOR SPORTS, INC., Case No. 09-12102 A Michigan Corporation, Honorable Gerald E. Rosen Magistrate Donald A. Scheer Plaintiff, v DICKINSON WRIGHT, PLLC., a Michigan 0300 - Professional Limited Liability Company. (248) 355 (248) Defendant. • ____________________________________/ FIRST AMENDED COMPLAINT AND DEMAND FOR TRIAL BY JURY Warrior Sports, Inc. ("Warrior”) states: THE PARTIES SOUTHFIELD, MICHIGAN 48075 LAW OFFICES • 1. Warrior is a Michigan corporation incorporated under the laws of Michigan with its SOMMERS SCHWARTZ, P.C. SUITE 900 principal offices in Macomb County, Michigan. Warrior is a citizen of Michigan. • R 2. Dickinson Wright PLLC ("DW") is a professional limited liability company formed under the laws of Michigan with its principal offices in Wayne County, Michigan. DW is a citizen of 2000 TOWN CENTE Michigan. Throughout this Amended Complaint, unless referred to with particularity, references to DW are references to particular attorney employees and/or equity shareholders of DW who provided legal services to Warrior in connection with the events referred to in this pleading. 2:09-cv-12102-GER-DAS Doc # 36 Filed 05/23/11 Pg 2 of 31 Pg ID 511 JURISDICTION AND VENUE 3. The controversy involves determination of issues involving application of patent law and substantial questions relating to patent law. This Court has jurisdiction under 28 U.S.C. §1338. 4. Defendant does business in this District. The current principal place of business of DW is in this District. The attorney client relation existing among Warrior and DW arose in this District. Many of the alleged breaches of that contract and/or the tort alleged occurred in this District. Accordingly, this Court has venue under 28 U.S.C. § 1391(a). 0300 - (248) 355 (248) • COMMON ALLEGATIONS A. The Attorney-Client Relations 5. Defendant DW is a law firm and/or was engaged in the practice of law. 6. DW employs as equity partners John A. Artz and John S. Artz, (the “Artzes”), who SOUTHFIELD, MICHIGAN 48075 LAW OFFICES • practice in the field of patent law. An attorney client relationship has existed between Warrior, as client, SOMMERS SCHWARTZ, P.C. and the Artzes, as attorneys, for many years. The relationship arose initially when the Artzes were SUITE 900 • employed by a patent law firm named Brooks & Kushman, P.C. (“the B&K law firm”). 7. The Artzes left the B&K law firm in approximately 1999 and were employed at John A. Artz, P.C. d/b/a Artz & Artz, P.C. (The “Artz Firm”). The Artz Firm was originally named as a co- 2000 TOWN CENTER CENTER TOWN 2000 defendant in this action. A settlement has occurred between Warrior and the Artz Firm without prejudice to this action against DW, or the claim made in this Amended Complaint, that DW has successor liability for the acts and omissions of the Artz Firm. 8. The Artz Firm merged with the DW Firm in June 2007, publically announcing the merger with a press release. The Artzes became equity partners at DW as a result of the merger. All actions taken by the Artzes since June, 2007 have been as partners and employees of DW. Upon information 2 2:09-cv-12102-GER-DAS Doc # 36 Filed 05/23/11 Pg 3 of 31 Pg ID 512 and belief, at the time of the merger, Warrior was the Artzes’ largest client and DW was interested in having Warrior as a client. 9. After the merger in 2007, Warrior was not consulted whether it would independently retain DW as its lawyers, and neither signed nor was offered to sign a separate fee agreement with DW. DW began billing Warrior for work performed by the Artzes, and other professionals employed by DW immediately after the 2007 merger between the Artz firm and DW. DW became the successor-in-interest to the Artz Firm insofar as the attorney client relationship existed with Warrior. 0300 - 10. This attorney-client relationship existed between Warrior and DW as of the date of the (248) 355 (248) • initial Complaint in this matter. B. Nature of the Representation 11. At all times relevant to this action, Warrior has been engaged in the design, manufacture SOUTHFIELD, MICHIGAN 48075 LAW OFFICES • and sale of sports equipment including lacrosse heads and sticks. SOMMERS SCHWARTZ, P.C. 12. Many of Warrior's designs and products are patented. At the time of their original SUITE 900 • retention, and throughout the relevant time period, the Artzes have held themselves out as experts in patent law, including patent prosecution and patent-related litigation. Over many years the Artzes, first with B&K and later with DW, have worked on a number of patent-related litigations for Warrior and 2000 TOWN CENTER CENTER TOWN 2000 have actively participated in the prosecution of the Warrior patent portfolio. 13. After the 2007 merger, DW (through the Artzes) represented to Warrior that its patent practice capabilities enabled more effective and broader representation to Warrior. For a considerable period of time, including today, DW prominently displayed (and in fact still displays) Warrior as a patent-related client in its website. 3 2:09-cv-12102-GER-DAS Doc # 36 Filed 05/23/11 Pg 4 of 31 Pg ID 513 C. The `216 Reissue 14. Warrior originally retained the Detroit law firm of Barnes, Kisselle, Raisch, Choate Whittenmore & Hulbert to file a patent application on a scooped lacrosse head invented by David Morrow, the President and founder of Warrior, and Philip Naumberg. On October 29, 1996, the United States Patent and Trademark Office (“PTO”) issued U.S. Patent No. 5,568,925 (the “’925 Patent”). 15. Warrior transferred its patent files, including the file for the '925 Patent, to the B&K law firm, where the Artzes began working on Warrior patent matters. Warrior transferred responsibility for 0300 - the application for the '216 Patent to the Artz Firm. The Artzes worked on obtaining the reissue of the (248) 355 (248) • ‘925 Patent, which involved John S. Artz disclosing certain information concerning alleged prior art to the PTO. 16. On August 12, 2003, after a re-issue proceeding, the PTO issued United States Patent No. RE 38,216 ("the ‘216 Reissue”), entitled "Scooped Lacrosse Head." The ‘216 Reissue is a reissue of the SOUTHFIELD, MICHIGAN 48075 LAW OFFICES • ‘925 Patent. SOMMERS SCHWARTZ, P.C. 17. “Warrior Lacrosse, Inc.” became the owner by assignment of the '216 Reissue and, owns SUITE 900 • all right, title and interest in it. Warrior Lacrosse subsequently changed its name to “Warrior Sports, Inc.,” the Plaintiff, and this entity owns the rights and title to the '216 Reissue. 18. The Artz Firm entered the '925 Patent and the '216 reissue application into its docketing 2000 TOWN CENTER CENTER TOWN 2000 system. The Artz Firm undertook responsibility for making maintenance fee payments on any patent owned by Warrior, including the '925 Patent and the '216 Reissue. 19. The PTO requires that three separate maintenance fees be paid on an issued patent. The first is due between the third and fourth years after issuance of the patent. The second is due between the seventh and eighth years after issuance of the patent. The third is due between the eleventh and twelfth years after issuance of the patent. 4 2:09-cv-12102-GER-DAS Doc # 36 Filed 05/23/11 Pg 5 of 31 Pg ID 514 20. The Second Maintenance Fee for the '216 Reissue was due during the period ending in October, 2004. D. Non-Payment Of The `216 Maintenance Fee 21. The Artz Firm undertook responsibility for paying the second maintenance fee on the '216 Reissue. The Artz firm had responsibility for paying the maintenance fees on other Warrior patents as well. The responsibility for paying the Second Maintenance Fee for the '216 reissue patent was 0300 - ultimately that of Mr. John S. Artz, the principal attorney for the '925 patent, which was succeeded by (248) 355 (248) • the '216 reissue patent. 22. The Artz Firm failed to pay the second maintenance fee on the '216 Reissue when due. The Artz Firm failed to confirm that a payment had been made, and then failed to check that the payment had been received by the PTO during the period of time when a missed maintenance fee could SOUTHFIELD, MICHIGAN 48075 LAW OFFICES • have been automatically accepted by the PTO. SOMMERS SCHWARTZ, P.C. 23. Upon information and belief, the Artz firm had previously missed paying the first SUITE 900 • maintenance fee on the ‘216 Reissue but had rectified the missed payment by a petition to the PTO. However, at least by reason of the missed earlier payment the Artz Firm was, or should have been, on notice that its docketing system and other methods used to monitor compliance with the PTO 2000 TOWN CENTER CENTER TOWN 2000 maintenance fee schedules were deficient. 24. As a direct and proximate result of the failure to pay the second maintenance fee, the '216 Reissue lapsed on October 29, 2004. By so lapsing, the ‘216 Reissue ceased to have any vitality, and the exclusivity obtained for Warrior under its claims was lost on October 29, 2004. Warrior was unaware of the lapse for over two years, however. 5 2:09-cv-12102-GER-DAS Doc # 36 Filed 05/23/11 Pg 6 of 31 Pg ID 515 25. Warrior competes in a competitive industry for lacrosse sticks, gloves, and related equipment. The scooped lacrosse head invention covered by the ‘216 Reissue gave Warrior a competitive advantage against other lacrosse stick manufacturers, and resulted in a large gain in sales for the company.
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