Case 6:04-cv-00867-ACC-DAB Document 25 Filed 12/30/04 Page 1 of 20 PageID 123 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA ORLANDO DIVISION RESPONSIBLE ME, INC., CASE NO.: 6:04-cv-867-Orl-22DAB a Florida corporation, Plaintiff, vs. DOREL JUVENILE GROUP, INC., a Massachusetts corporation; KB TOYS, Inc., a Delaware corporation; K-MART CORPORATION, a Delaware corporation; and WAL-MART STORES, Inc., a Delaware corporation; Defendants. __________________________________/ THIRD AMENDED COMPLAINT FOR DAMAGES AND DEMAND FOR JURY TRIAL WITH INJUNCTIVE RELIEF SOUGHT COMES NOW Plaintiff, RESPONSIBLE ME, INC. (“Plaintiff” or “RMI”) by and through its undersigned attorneys, and pursuant to Fed. R. Civ. P. 15(a) states as its Third Amended Complaint, the following: PARTIES 1. Plaintiff RMI is a corporation formed under the laws of the State of Florida and maintains its principal place of business at 632 East Amelia Street, Orlando, Florida 32803. 2. Defendant DOREL JUVENILE GROUP, INC. (“DOREL”) is, upon information and belief, a corporation formed under the laws of Massachusetts with its principal place of business at 45 Dan Road, Canton, Massachusetts 02021. Upon Case 6:04-cv-00867-ACC-DAB Document 25 Filed 12/30/04 Page 2 of 20 PageID 124 information and belief, DOREL does business and makes sales to retailers and other entities in this federal judicial district and throughout the United States. 3. Defendant KB TOYS, INC. (“KB TOYS”) is, upon information and belief, a corporation formed under the laws of the State of Delaware with its principal place of business at Pittsfield, Massachusetts. Upon information and belief, KB TOYS purchases products subject to the patent referenced in this lawsuit from DOREL and/or its said subsidiaries. Upon information and belief, KB TOYS does business and makes sales to consumers in this federal judicial district and throughout the United States. 4. Defendant K-MART CORPORATION (“KMART”) is, upon information and belief, a corporation formed under the laws of the State of Delaware with its principal place of business at Troy, Michigan. Upon information and belief, KMART purchases products subject to the patent referenced in this lawsuit from DOREL and/or its said subsidiaries. Upon information and belief, KMART does business and makes sales to consumers in this federal judicial district and throughout the United States. 5. Defendant WAL-MART STORES, INC. (“WAL-MART”) is, upon information and belief, a corporation formed under the laws of the State of Delaware with its principal place of business at Bentonville, Arkansas. Upon information and belief, WAL-MART purchases products subject to the patent referenced in this lawsuit from DOREL and/or its said subsidiaries. Upon information and belief, WAL-MART does business and makes sales to consumers in this federal judicial district and throughout the United States. 2 Case 6:04-cv-00867-ACC-DAB Document 25 Filed 12/30/04 Page 3 of 20 PageID 125 JURISDICTION AND VENUE 6. This action arises under the Patent Laws of the United States, that is, Title 35 U.S. Code §271, et seq. and the Trademark laws of the United States, that is, the Lanham Act, 15 U.S.C. §1114, et seq., and as such, this Court has jurisdiction over this cause pursuant to Title 28 U.S. Code § 1338 in that this case involves an infringement of a patent issued and trademark registered by the United States of America Patent and Trademark Office. Moreover, all Defendants engage in a regular course of business in the Middle District of Florida, thereby giving this Court personal jurisdiction over all Defendants. 7. Venue is proper as to DOREL pursuant Title 28, U.S. Code § 1391(d). 8. Venue is also proper in this District as to all Defendants pursuant to Title 28, U.S. Code § 1400(b) in that, upon information and belief, all Defendants have sold, caused to be sold, or offered for sale, products which infringe the Patent (as hereinafter defined) and which all parties knew or should have known were to be distributed or sold within this judicial district. Further, pursuant to Middle District Local Rule 1.02(c), venue is appropriate in the Orlando Division of the Middle District of Florida because the alleged acts giving rise to this claim occurred in one or more of the counties of which the Orlando Division is comprised as set forth in Local Rule 1.02 (b)(3). COMMON ALLEGATIONS 9. Upon information and belief said DOREL is the parent company to the following subsidiaries in the United States: Cosco Management, Inc., Dorel Juvenile Group, Inc., and Safety 1st, Inc., all of which sell and distribute DOREL products 3 Case 6:04-cv-00867-ACC-DAB Document 25 Filed 12/30/04 Page 4 of 20 PageID 126 throughout the United States. 10. Upon information and belief, DOREL has used or is using the following agents and distributors to distribute its products: Burlington Coat Factory Direct Corporation, JC Penney Corportion, Inc., KB Toys, Inc., K-Mart Corporation, Toys “R” Us-Delaware, Inc., Wal-Mart Stores, Inc., and the Walt Disney Company. 11. On November 26, 2002, United States Patent No. 6,484,989 B1 (the “Patent or the ‘989 Patent”), was duly issued to one Mente Connery, Orlando, Florida by the United States Patent and Trademark Office for a highchair helper which can be generally described as a tray extension device for baby highchair trays. The ‘989 Patent was filed in 2000 and claims the benefit of priority to a previous patent and provisional patent application that were both filed in 1998. 12. By assignment from said Connery to said RMI dated October 23, 2001, said RMI currently holds all right, title and interest in the Patent. 13. At all times subsequent to October 23, 2001, said RMI has been and is currently the owner of the Patent and all rights appertaining thereto. 14. Said Connery met with representatives of the Playskool Division of a company known as Hasbro, Inc. (“Hasbro”) in 1998 after filing her provisional application for patent referenced in ¶ 11 above concerning the possibility of entering into a licensing agreement concerning the highchair helper, however, the parties did not reach any agreement concerning same. Subsequent to Plaintiff’s discussions with representatives of Hasbro concerning the possibility of licensing the highchair helper, Hasbro’s Playskool Division was either purchased or otherwise acquired by DOREL and/or its subsidiary Cosco and, attendant to that transaction and upon information and 4 Case 6:04-cv-00867-ACC-DAB Document 25 Filed 12/30/04 Page 5 of 20 PageID 127 belief, one or more individuals with whom Connery had discussed licensing the highchair helper left the employ of Hasbro and became employed by DOREL and/or its subsidiary Cosco. 15. In 2000, DOREL filed an application for patent directed to an accessory tray for high chairs, which issued as U.S.P.N. 6,298,793 (“DOREL Patent”) in 2001. The structure specified therein falls within the scope of RMI’s ‘989 Patent. 16. Thereafter, DOREL introduced a product into the marketplace known as PARENT ASSIST, which corresponds to the structure of said DOREL patent and which infringes said Patent of RMI. COUNT I PATENT INFRINGEMENT (AS TO DOREL) 17. Plaintiff repeats and realleges each and all of the allegations contained in Paragraphs 1-16 of this Second Amended Complaint as though set forth fully at length herein. 18. DOREL and/or its said subsidiaries set forth in ¶ 9 above and/or its said distributors and agents set forth in ¶ 10 above, make, use, sell, and import the PARENT ASSIST tray as part of its production and sale of various models of highchairs including, but not limited to, the HIGHCHAIR MODEL 03-330 OPTIONS FIVE HIGHCHAIR, CLEAN AND CONVENIENT HIGH CHAIR (MODEL 03-060), CLEAN AND CONVENIENT HIGH CHAIR (DISNEY BABY MODEL 03-061), STAGES HIGH CHAIR (MODEL 03-332), THE LITTLE DINER HIGH CHAIR (MODEL 03-345), and DISNEY MAGICAL BEGININGS HIGH CHAIR. 5 Case 6:04-cv-00867-ACC-DAB Document 25 Filed 12/30/04 Page 6 of 20 PageID 128 19. The sales of highchair models furnished with the PARENT ASSIST tray are facilitated or convoyed thereby. 20. DOREL and/or its said subsidiaries set forth in ¶ 9 above and/or agents thereof set forth in ¶ 10 above have also made, sold, offered for sale, imported and continue to so make and sell said PARENT ASSIST tray for ordering individually by the public as an accessory to their highchair models. 21. DOREL and/or its said subsidiaries set forth in ¶ 9 above and/or agents thereof set forth in ¶ 10 above have, through said acts, infringed Plaintiff’s rights of manufacture and sale. 22. Prior to said infringement by DOREL and/or its said subsidiaries set forth in ¶ 9 above and/or agents thereof set forth in ¶ 10 above, RMI existed as a viable production and marketing entity for highchair products including a highchair accessory known as the “Clip-Away Feeding Tray” the structure of which is embodied in the ‘989 Patent. Due to the Defendants’ infringement, RMI is now threatened with extinction. 23. In the absence of injunctive relief, Defendants will continue to violate the Patent Laws of the United States, and to infringe and violate the claims of the ‘989 Patent to the detriment and injury of the Plaintiff. 24. On information and belief DOREL and/or its agents and subsidiaries proceeded with such infringing action subsequent to learning of RMI’s patent, therefore, this case is exceptional within the meaning of Title 35, U.S.C. 285, by virtue of Defendants’ continuing, willful, and knowing infringement of the Plaintiff’s ‘989 Patent.