Upfitters v. Brooking - Amended Complaint

Case 3:18-cv-00496-MMH-PDB Document 20 Filed 05/11/18 Page 1 of 15 PageID 222
UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF FLORIDA
Upfitters, L.L.C,
Plaintiff,
vs.
Case No.: 3:18-cv-00496-MMH-PDB
Richard K Brooking, in his individual
capacity,
Edward Spencer Brooking, in his
DEMAND FOR JURY TRIAL
individual capacity,
Brooking Industries, Inc., and
INJUNCTIVE RELIEF SOUGHT
Dana Safety Supply, Inc.
Defendants.
AMENDED COMPLAINT
1. Plaintiff Upfitters, L.L.C, (hereinafter “Upfitters”) for its Amended
Complaint against Defendants Richard K. Brooking, Edward Spencer Brooking, and
Brooking Industries, Inc., and Dana Safety Supply, Inc., allege as follows:
PARTIES
2. Upfitters is an Oklahoma Limited Liability company with a principal place
of business at 414 S. Kinnick Rd., Stillwater, Oklahoma, 74074-7443.
3. Defendant Richard K. Brooking is an individual who, on information and
belief, resides at 180 Briarberry Rd, Ponte Vedra, Saint Johns County, FL 32081-0598. On
information and belief, Defendant Richard Brooking owns a significant interest in
Defendant Brooking Supplies, Inc. and exercises control of same as well as being an alter
ego for Defendant Brooking Supplies, Inc.

4. Defendant Edward Spencer Brooking, is an individual who, on information
and belief, resides at 223 Eagle Rock Dr Ponte Vedra, Duval County, FL 32081-8398. On
information and belief, Defendant Edward Brooking owns a significant interest in
Defendant Brooking Supplies, Inc. and exercises control of same as well as being an alter
ego for Defendant Brooking Supplies, Inc.
5. Defendant Brooking Industries, Inc. (“BII”) is a Florida Corporation with a
principal place of business at 104 Liberty Center Pl, St. Augustine, FL, Saint Johns County,
FL 32092-0919 and with a registered FL agent of Richard K. Brooking with a mailing
address of 180 Briarberry Rd, Ponte Vedra, FL 32081-0598.
6. Defendant Dana Safety Supply, Inc. (“DSS”) is a Florida Corporation with
a principal place of business at 5221 West Market Street, Greensboro, NC 27 27409-2629
and with a registered FL agent of Joanne A. Ackman with a mailing address of 1725
Memorial Park Drive, Jacksonville, FL 32204-4117. DSS also has a regular and established
place of business at 1855 Cassat Ave #11, Jacksonville, Duval County, FL 32210-1635.
DSS sells products supplied by the other defendants.
JURISDICTION AND VENUE
7. For the cause of action for patent infringement pursuant to 35 U.S.C. § 271
over which federal courts have exclusive jurisdiction, this Court has subject matter
jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
8. For the cause of action for copyright infringement pursuant to 17 U.S.C.
§ 501 over which federal courts have exclusive jurisdiction, this Court has subject matter
jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
Page 2
9. For the cause of action for breach of contract this Court has subject matter
jurisdiction pursuant to 28 U.S.C. §§ 1367(a) since the claim is “so related to claims in the
action within such original jurisdiction that they form part of the same case or controversy
under Article III of the United States Constitution.” Id.
10. This Court has personal jurisdiction over Richard K Brooking and Edward
Spencer Brooking for at least the following reasons: (i) they each reside in this District,
(ii) each has committed acts of patent infringement and/or contributed to or induced acts
of patent infringement by others in this District and continues to do so; (iii) each regularly
does business or solicits business, engages in other persistent courses of conduct, and/or
derives substantial revenue from products and/or services provided to individuals in this
District and in this State; and (iv) each has purposefully established substantial, systematic
and continuous contacts with this District and expects or should reasonably expect to be
subjected to this Court’s jurisdiction.
11. This Court has personal jurisdiction over BII for at least the following
reasons: (i) BII is deemed to be a citizen of Florida because it is incorporated in Florida
and has a principal place of business in this District, (ii) BII has committed acts of patent
infringement and/or contributed to or induced acts of patent infringement by others in this
District and continues to do so; (iii) BII regularly does business or solicits business,
engages in other persistent courses of conduct, and/or derives substantial revenue from
products and/or services provided to individuals in this District and in this State; and
(iv) BII has purposefully established substantial, systematic and continuous contacts with
Page 3
this District and expects or should reasonably expect to be subjected to this
Court’s jurisdiction.
12. This Court has personal jurisdiction over DSS for at least the following
reasons: (i) DSS is deemed to be a citizen of Florida because it is incorporated in Florida,
(ii) DSS has committed acts of patent infringement and/or contributed to or induced acts
of patent infringement by others in this District and continues to do so; (iii) DSS regularly
does business or solicits business, engages in other persistent courses of conduct, and/or
derives substantial revenue from products and/or services provided to individuals in this
District and in this State; and (iv) DSS has purposefully established substantial, systematic
and continuous contacts with this District and expects or should reasonably expect to be
subjected to this Court’s jurisdiction.
13. Pursuant to 28 U.S.C. § 1400 this District is the proper venue for this patent
infringement case as the Defendants (i) reside in this District, (ii) have committed acts of
infringement in this District, and (iii) have a regular and established place of business or
residence in this District.
14. Pursuant to Local Rule 1.02, the Jacksonville Division of this District is the
proper division to hear this case as all Defendants reside in either Duval County or Saint
Johns County.
Page 4
CLAIMS FOR RELIEF
FIRST CLAIM FOR RELIEF
Infringement of the ‘863 and ‘558 Patents
15. Upfitters brings this claim for relief to protect its rights and investment in
its innovations embodied in utility United States Patent Nos. 9,168,863 (“the ’863 patent”)
and 9,776,558 (“the ’558 patent”) (collectively “the Upfitters Patents”).
16. The Upfitters Patents have been assigned to Upfitters, and Upfitters owned
the patents throughout the period of the infringing acts and still owns the Upfitters Patents.
17. The ’863 patent entitled “Flasher Vehicle Interface Module” was issued on
Oct. 27, 2015, and true and correct copy of the ‘863 patent is attached. See Exhibit 1,
United States Pat. No. 9,168,863.
18. The ’558 patent entitled “Flasher Vehicle Interface Module” was issued on
Oct. 3, 2017, and true and correct copy of the ’558 patent is attached. See Exhibit 2, United
States Pat. No. 9,776,558.
19. The Upfitters Patents are directed to, among other things, flasher vehicle
interface modules for use, for example, on first responder vehicles. Upfitters has introduced
and publicizes and sells products based on the Upfitters Patents. See, for example, see
Plaintiff’s web site at http://www.qcullc.com/products.html.
20. Upfitters has complied with the statutory requirement of placing a notice of
the letters patent on all flasher vehicle interface modules it manufactures and sells giving
the public notice of its patents.
Page 5
21. Upfitters has provided written notice of infringement to the Defendants. See
Exhibits 3 and 4.
22. BII and DSS have willfully infringed and continue to infringe at least claim
1 of the ’863 Patent or at least claim 1 of the ’558 Patent by making, using, testing, selling,
licensing, offering for sale within the United States and/or importing into the United States
at least the following products models from the BII website
(https://www.brookingindustries.com) and catalog (See Exhibit 5, Selected portions of BII
catalog): FL-5OHIFDC15, FL-8ORFiP, FL-8ORFIP-2, FL-8ORFID-2, FL-4OFIFM, FL-
41U-1, and FL-2ORFIF (the “Accused ‘863 Products”). 35 U.S.C. § 271 (a).
23. DSS is a distributor of BII and infringed and continues to infringe at least
claim 1 of the ’863 Patent or at least claim 1 of the ’558 Patent by using, testing, selling,
and offering for sale within the United States the following products models via avenue of
commerce including, but not limited to, the DSS website
(http://www.danasafetysupply.com/). See Exhibit 6, Selected portions of DSS website.
24. The Dana Safety Supply, website asserts that DSS is a distributor of BII
including the following on its website:
Brooking Industries - Brooking Industries provides public safety and

emergency response agencies with the best possible solutions for
emergency vehicle and prisoner transport equipment needs. Nearly three
decades in the industry and an expansive product line provide an assurance
of responsive customer service, quality products, and affordable prices.
Brooking’s manufacturing capabilities enable the company to ship directly
to you from manufacturing and wholesale distribution facilities in Florida
and Indiana.
Id.
Page 6
25. Duval Motor Company (“Duval”), a Florida corporation, has responded to
the Upfitters notice of infringement and offer to license, Exhibit 4, indicating that it is the
owner of DSS. Exhibits 7 and 8. Most interestingly, Duval asserts that “because Brooking
Industries has agreed to fully indemnify and hold Dana Safety Supply harmless with
respect to your client's claims and demands, we suggest that henceforth you direct any
future correspondence in this matter to Brooking and/or its attorneys.”
26. Upfitters reserves the right to amend the complaint to add Duval Motor
Company if necessary.
27. Given that Brooking has failed to respond to Upfitters’ notice letter and
offer to license, and DSS has directed “future correspondence” to Brookings, Upfitters’
only remaining course of action to enforce its patent rights: bring suit in this Court.
28. BII and DSS will continue to infringe on the Upfitter Patents unless
enjoined by this court.
WHEREFORE, Upfitters prays that this Court enter judgment and provide relief
as follows:
a) That the Defendants BII and DSS has willfully and directly
infringed the Upfitters Patents;
b) That the Defendants BII and DSS be ordered to account for and pay
to Upfitters the damages resulting from the Defendant’s infringement of the
Upfitters Patents, together with interest and costs, and all other damages permitted
by 35 U.S.C. §§ 281, 284, 286, 289, including enhanced damages up to three times
the amount of damages found or measured, and further including an accounting for
Page 7
infringing sales not presented at trial and an award by the court of additional
damages for any such infringing sales;
c) That the Defendants BII and DSS be enjoined to cease
manufacturing, importing, selling and offering to sell all products that infringe on
Upfitters Patents pursuant to 35 U.S.C. § 283;
d) That this infringement be declared exceptional and Upfitters be
awarded its costs, expenses, and reasonable attorneys’ fees in this action pursuant
to 35 U.S.C. § 285; and
e) That Upfitters be awarded such other equitable or legal relief as this
Court deems just and proper under the circumstances.
SECOND CLAIM FOR RELIEF
Induced Infringement of the ‘863 and ‘558 Patents
29. Upfitters brings this claim for relief to protect its rights and investment in
its innovations embodied in utility United States Patent Nos. 9,168,863 (“the ’863 patent”)
and 9,776,558 (“the ’558 patent”) (collectively “the Upfitters Patents”).
30. Richard K. Brooking and Edward Spencer Brooking have induced and
continue to induce the infringement of at least claim 1 of the ’863 patent or at least claim
1 of the ’558 patent by directing BII or DSS, or both, to infringe the ’863 or ‘558 patent,
including by inducing the developing, making, marketing, advertising, and/or providing
the software, documentation, materials, training or support and aiding, abetting,
encouraging, promoting or inviting use thereof. 35 U.S.C. § 271 (b).
Page 8
31. BII have induced and continue to induce the infringement of at least claim
1 of the ’863 patent or at least claim 1 of the ’558 patent by directing DSS to infringe the
’863 or ‘558 patent, including by inducing the developing, making, marketing, advertising,
and/or providing the software, documentation, materials, training or support and aiding,
abetting, encouraging, promoting or inviting use thereof. 35 U.S.C. § 271 (b).
as follows:
a) That the Defendants Richard K. Brooking, Edward Spencer
Brooking, and BII have induced the infringement of the Upfitters Patents;
b) That the Defendants Richard K. Brooking, Edward Spencer
Brooking, and BII be ordered to account for and pay to Upfitters the damages
resulting from the Defendant’s induced infringement of the Upfitters Patents,
together with interest and costs, and all other damages permitted by 35 U.S.C. §§
281, 284, 286, 289, including enhanced damages up to three times the amount of
damages found or measured, and further including an accounting for infringing
sales not presented at trial and an award by the court of additional damages for any
such infringing sales;
c) That the Richard K. Brooking, Edward Spencer Brooking, and BII
be enjoined to cease inducing any other party from manufacturing, importing,
selling and offering to sell all products that infringe on Upfitters Patents pursuant
to 35 U.S.C. § 283;
Page 9
d) That this infringement be declared exceptional and Upfitters be
awarded its costs, expenses, and reasonable attorneys’ fees in this action pursuant
to 35 U.S.C. § 285; and
e) That Upfitters be awarded such other equitable or legal relief as this
THIRD CLAIM FOR RELIEF
Breach of Contract
32. Richard K. Brooking, BII, Bodie Bracken, and Amanda Piersing worked
together in commercializing early designs for a flasher circuit that can be installed as a
plug-and-play solution in first responder vehicles.
33. Richard K. Brooking or BII paid the attorney fees and costs for preparing
and filing the ’863 Patent.
34. Upfitters paid the attorney fees and costs for preparing and filing the
’558 Patent.
35. On May 1, 2012, BII entered into an agreement with the Inventors. See
Exhibit 9, Agreement between BII, Bodie Bracken, and Amanda Piersing
(the “Agreement”).
36. The Agreement required BII to “[h]old private and confidential any and all
product designs and ideas put forth by Bracken/Piersing/Brooking.” Id.
37. BII also agreed “to pay Bracken/Piersing a commission, royalty and/or
design fee/charge for all products developed by the team of
Bracken/Piersing/Brooking.” Id.
Page 10
38. BII agreed that “[f]or all product developed and sold under the terms of this
agreement, BII will provide Bracken/Piersing with a sales report for said product on the
first of every month and pay Bracken/Piersing a commission and/or royalty as defined in
the agreement.” Id.
39. BII has breached its above-noted duties under the Agreement.
40. Richard K. Brooking and BII were presented with a license to formalize the
relationship between Upfitters and BII See Exhibit 10, Letter transmitting licensing offer
to Richard Brooking.
41. Richard K. Brooking and BII refused to sign any license.
42. The Agreement was terminated by Bracken and Piersing in writing on Sep.
22, 2014. See Exhibit 11, Letter from Martin S. High to Trevor T. Graves, attorney for BII
and Richard K. Brooking.
43. BII has breached the duties of the Agreement.
as follows:
a) That BII has breached the agreement entered on May 1, 2012;
b) That BII be ordered to pay to Upfitters the damages resulting from
the Defendant’s breach of contract;
c) That BII be ordered to pay to Upfitters its costs, expenses, and
reasonable attorneys’ fees in this action for prosecution of the breach of
contract claim;
Page 11
d) That Upfitters be awarded such other equitable or legal relief as this
FOURTH CLAIM FOR RELIEF
Copyright Infringement
44. Upfitters have filed an application for multiple protectable works. See
copyright registration App. Ser. No’s. 1-6379371698, 1-6379371611, 1-6379371554,
1-6354332321 (hereinafter “Upfitters Copyrights”) for certain works pertaining to the
marketing of its products. See Exhibit 12, Copyright Applications.
45. Defendants BII and DSS have willfully infringed the Upfitters Copyrights
by copying and distributing materials covered by Upfitters Copyrights.
46. BII has infringed and continues to infringe on Upfitters Copyrights by
including exact copies of Upfitters Copyright materials in packaging with the
infringing products.
47. DSS as a distributor of BII has infringed and continues to infringe on
Upfitters Copyrights by including exact copies of Upfitters Copyright materials in
packaging with the infringing products.
48. The defendants BII and DSS have willfully infringed the Upfitters
Copyrights by copying and distributing materials covered by the Upfitters Copyrights.
as follows:
a) That Defendant BII has willfully infringed the Upfitters Copyrights;
Page 12
b) That Defendant DSS has willfully infringed the
Upfitters Copyrights;
c) That Defendants BII and DSS be enjoined to cease copying,
displaying or otherwise infringing on Upfitters Copyrights pursuant to 17
U.S.C. § 502;
d) That BII and DSS be ordered to pay to Upfitters the statutory
damages resulting from the Defendant’s infringement of the Upfitters Copyrights
pursuant to 17 U.S.C § 504(c), including statutory damages for willful infringement
of Upfitters Copyrights, or in the alternative pay actual damages to Upfitters
pursuant to 17 U.S.C § 504(b);
e) That Upfitters be awarded its costs, expenses, and reasonable
attorneys’ fees in this action for copyright infringement pursuant to 17 U.S.C § 505;
f) That Upfitters be awarded such other equitable or legal relief as this
DEMAND FOR JURY TRIAL
49. Pursuant to Federal Rule of Civil Procedure 38, Upfitters demands a jury
trial on all issues so triable.
Page 13
Dated: May 11, 2018 Respectfully submitted,
/s/ Fernando A. Dutra

Fernando A. Dutra, FL Bar # 110354
Camile A. Wilson, FL Bar # 106387
Wilson Dutra, PLLC
7643 Gate Pkwy Ste 10489
Jacksonville, FL 32256-2893
Telephone: 904.955.1975
Email: fdutra@wilsondutra.com
Email: cwilson@wilsondutra.com
LOCAL COUNSEL
Martin S. High, Trial Counsel, SC Bar

#102735; OK Bar #20725
Martin S. High, P.C.
PO Box 33190
Clemson SC 29733-3190
Telephone: 864.300.2444
Facsimile: 866.232.1096
Email: marty@martyhigh.com
ADMISSION PRO HAC VICE
PENDING
Edward L. White, Trial Counsel, OK

Bar # 16549
Edward L. White, P.C.
829 E. 33rd St.
Edmond, OK 73013
Telephone: 405.810.8188
Facsimile: 405.608.0971
Email: ed@edwhitelaw.com
ADMISSION PRO HAC VICE
PENDING
ATTORNEYS FOR PLAINTIFF
Page 14

Upfitters v. Brooking - Amended Complaint

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Case 3:18-cv-00496-MMH-PDB Document 20 Filed 05/11/18 Page 1 of 15 PageID 222

UNITED STATES DISTRICT COURT

1. Plaintiff Upfitters, L.L.C, (hereinafter “Upfitters”) for its Amended

Complaint against Defendants Richard K. Brooking, Edward Spencer Brooking, and

2. Upfitters is an Oklahoma Limited Liability company with a principal place

of business at 414 S. Kinnick Rd., Stillwater, Oklahoma, 74074-7443.

3. Defendant Richard K. Brooking is an individual who, on information and

information and belief, Defendant Richard Brooking owns a significant interest in

ego for Defendant Brooking Supplies, Inc.

4. Defendant Edward Spencer Brooking, is an individual who, on information

information and belief, Defendant Edward Brooking owns a significant interest in

ego for Defendant Brooking Supplies, Inc.

5. Defendant Brooking Industries, Inc. (“BII”) is a Florida Corporation with a

FL 32092-0919 and with a registered FL agent of Richard K. Brooking with a mailing

address of 180 Briarberry Rd, Ponte Vedra, FL 32081-0598.

6. Defendant Dana Safety Supply, Inc. (“DSS”) is a Florida Corporation with

a principal place of business at 5221 West Market Street, Greensboro, NC 27 27409-2629

DSS sells products supplied by the other defendants.

JURISDICTION AND VENUE

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

8. For the cause of action for copyright infringement pursuant to 17 U.S.C.

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

under Article III of the United States Constitution.” Id.

subjected to this Court’s jurisdiction.

reasons: (i) BII is deemed to be a citizen of Florida because it is incorporated in Florida

infringement and/or contributed to or induced acts of patent infringement by others in this

this District and expects or should reasonably expect to be subjected to this

reasons: (i) DSS is deemed to be a citizen of Florida because it is incorporated in Florida,

subjected to this Court’s jurisdiction.

residence in this District.

CLAIMS FOR RELIEF

FIRST CLAIM FOR RELIEF

Infringement of the ‘863 and ‘558 Patents

and 9,776,558 (“the ’558 patent”) (collectively “the Upfitters Patents”).

United States Pat. No. 9,168,863.

States Pat. No. 9,776,558.

Plaintiff’s web site at http://www.qcullc.com/products.html.

the public notice of its patents.

at least the following products models from the BII website

(https://www.brookingindustries.com) and catalog (See Exhibit 5, Selected portions of BII

catalog): FL-5OHIFDC15, FL-8ORFiP, FL-8ORFIP-2, FL-8ORFID-2, FL-4OFIFM, FL-

commerce including, but not limited to, the DSS website

(http://www.danasafetysupply.com/). See Exhibit 6, Selected portions of DSS website.

including the following on its website:

Brooking Industries - Brooking Industries provides public safety and

25. Duval Motor Company (“Duval”), a Florida corporation, has responded to

future correspondence in this matter to Brooking and/or its attorneys.”

enjoined by this court.

infringed the Upfitters Patents;

to Upfitters the damages resulting from the Defendant’s infringement of the

damages for any such infringing sales;

c) That the Defendants BII and DSS be enjoined to cease

Upfitters Patents pursuant to 35 U.S.C. § 283;

d) That this infringement be declared exceptional and Upfitters be

to 35 U.S.C. § 285; and

e) That Upfitters be awarded such other equitable or legal relief as this

Court deems just and proper under the circumstances.

SECOND CLAIM FOR RELIEF

Induced Infringement of the ‘863 and ‘558 Patents

and 9,776,558 (“the ’558 patent”) (collectively “the Upfitters Patents”).

including by inducing the developing, making, marketing, advertising, and/or providing

the software, documentation, materials, training or support and aiding, abetting,

encouraging, promoting or inviting use thereof. 35 U.S.C. § 271 (b).

abetting, encouraging, promoting or inviting use thereof. 35 U.S.C. § 271 (b).