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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

Joseph G. Adams (#018210) David G. Barker (#024657) Mark W. Williams (#026403) Matthew T. Schoonover (#028003) SNELL & WILMER L.L.P. One Arizona Center 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 Telephone: 602.382.6000 E-Mail: jgadams@swlaw.com dbarker@swlaw.com mwwilliams@swlaw.com mschoonover@swlaw.com Attorneys for Plaintiff Patriot Ordnance Factory, Inc. and Frank DeSomma IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

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Patriot Ordnance Factory, Inc., an Arizona corporation; and Frank DeSomma, an individual, Plaintiffs, v. Advanced Device Design, Inc., an Arizona corporation; Robert B. Davies, an individual; and Robert Hogan and Dawn Hogan, husband and wife, Defendants.

No. COMPLAINT

Plaintiffs Patriot Ordnance Factory, Inc. (POF) and Frank DeSomma (DeSomma and collectively with POF, Plaintiffs) allege the following for their complaint against defendants Advanced Device Design, Inc. (ADD), Robert B. Davies (Davies), Robert Hogan (Hogan), and Dawn Hogan (collectively, Defendants): OVERVIEW 1. POF is an American owned and operated small business, based in Phoenix,

Arizona, that specializes in the research, development, and manufacturing of firearms and

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

firearm accessories. Frank DeSomma is the principal owner of POF and its CEO. POF is dedicated to, and recognized in the industry for, providing high-quality, reliable, accurate, dependable, and durable parts and accessories for law enforcement, military, and civilian firearm applications. The innovations POF has introduced to its firearms have been described as among the most significant developments for similar firearms, and as improving both reliability and maintainability over any of its conventional competitors. Add to that the ability to operate without lubrication of any kind . . . and the result is a truly revolutionary design. 2. Defendants dispute with POF over POFs alleged infringement of United

States Patent No. 8,230,634 (the 634 Patent; attached as Exhibit 1) is Defendants latest attempt to put POF out of business. Defendants design, license, manufacture, and/or sell firearms that are counterfeits of, and/or inferior to, POFs firearms, and Defendants recognize they are unable to compete fairly and on equal terms with POF. 3. Accordingly, Defendants are colluding to remove POFs superior products

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from the market so Defendants do not have to compete with POF. In one attempt to achieve that objective, Defendants have asserted that POFs products infringe the 634 Patent and demanded that POF stop making, using, or offering to sale the allegedly infringing products. 4. But the 634 Patent is invalid, at least because a firearm that anticipates the

claims or renders them obvious was in public use or on sale in this country more than one year prior to the filing date of the 634 Patent. Further, the 634 Patent is unenforceable because Davies and Hogan committed fraud on the United States Patent and Trademark Office (PTO) in prosecuting the 634 Patent and/or its parent application, and POFs products do not infringe any valid or enforceable claim of the 634 Patent. 5. Further, DeSomma is an inventor of subject matter claimed in the 634

Patent and should thus be listed as an inventor in the patent, which would grant ownership in the patent to DeSomma. Davies and DeSomma were listed as inventors on the parent application of the 634 Patent, but Davies and Hogan secretly filed a continuation -2-

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

application that matured into the 634 Patent, listing Davies and Hogan as inventors, but omitting DeSomma. 6. Further, Defendants are competing unfairly and will continue to compete

unfairly with POF, including by making false representations of fact about POFs firearms, and Defendants have disparaged and will continue to disparage POFs business to POFs customers, suppliers, and distributors, unless Defendants are enjoined by this Court. PARTIES 7. POF is an Arizona corporation with its principal place of business located in

Phoenix, Arizona. 8. Frank DeSomma is the principal owner and CEO of POF and is a citizen of,

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and is domiciled in, Maricopa County, Arizona. 9. ADD is an Arizona corporation with its principal place of business located

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in Tempe, Arizona. 10. Robert B. Davies owns and controls ADD and is a citizen of, and is

domiciled in, Maricopa County, Arizona. 11. Robert Hogan and Dawn Hogan are citizens of, and are domiciled in,

Maricopa County, Arizona. Robert Hogan was at all material times married to Dawn Hogan. On information and belief, all acts alleged herein to have been committed by Robert Hogan were committed on behalf of and for the benefit of their marital community. JURISDICTION AND VENUE 12. This civil action is brought under the Declaratory Judgment Act, 28 U.S.C.

2201 and 2202, and arises under the patent laws of the United States, including without limitation 35 U.S.C. 101, 102, 103, 112, and 256, and under the Lanham Act, including without limitation 15 U.S.C. 1125. This civil action further includes a claim for business disparagement under the laws of the State of Arizona. Subject matter jurisdiction is proper in this Court under 28 U.S.C. 1331, 1338(a) and (b), and 1367. -3-

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13. business. 14.

Defendants have colluded and are continuing to collude to force POF out of

In furtherance of their scheme, Davies and Hogan secretly filed the patent

application that matured into the 634 Patent, but omitted DeSomma as an inventor in the application. DeSomma is an inventor of subject matter claimed in the 634 Patent, as evidenced, without limitation, by the 634 Patents parent application, United States Patent Application No. 12/497,048 (the 048 Application; the publication of which is United States Patent Application Publication No. 2011/0000119, attached as Exhibit 2), to which the 634 Patent claims priority as a continuation. Davies and DeSomma were listed as inventors in the 048 Application, but Davies failed to list DeSomma as an inventor in the 634 Patent; instead, Davies listed Hogan as an inventor. Accordingly, there is an actual, concrete, and justiciable controversy between POF and the Defendants regarding the correct inventorship of the 634 Patent, and, hence, the correct ownership of and rights in the patent. 15. Also in furtherance of their scheme, ADD and Davies sent a letter to

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DeSomma and POF on August 24, 2012 (the POF Letter) alleging POF has directly or indirectly infringed at least claim 1 of the 634 Patent. On information and belief, ADD and Davies sent the POF Letter on behalf of Hogan, based on the parties prior course of conduct and because Hogan is listed as an inventor in the 634 Patent. The POF Letter charged POF with infringement of the 634 Patent. 16. The POF Letter was one of many acts in furtherance of Defendants scheme

to put POF out of business. 17. Based on Defendants alleged rights in the 634 Patent, the POF Letter

demanded that POF immediately (1) stop making, using, selling, and offering to sell POFs firearms, (2) provide an accounting to ADD and Davies, and (3) pay damages to ADD and Davies. The POF Letter demanded a response by a specific date and threatened the commencement of more formal remedial measures if POF did not respond.

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

18.

Defendants demands are unreasonable and unsupported by the facts and the

law. Defendants allege that POFs firearms infringe the 634 Patent, and POF continues to sell the firearms that are alleged to infringe; Defendants have put Plaintiffs in the position of either pursuing arguably illegal behavior or abandoning that which Plaintiffs have a right to do. Accordingly, Plaintiffs expect Defendants to sue POF and/or DeSomma for patent infringement. 19. ADD and Davies have previously resorted to litigation in the American

Arbitration Association against POF. Hogan has previously resorted to litigation against POF in the Superior Court of Arizona. These litigations involve and/or relate to products that are similar to the products alleged to infringe the 634 Patent. 20. The disputes between Plaintiffs and Defendants are definite, concrete, real,

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and substantial, and specific relief through a decree of a conclusive character is available to resolve the disputes in favor of Plaintiffs regarding the invalidity, noninfringement, unenforceability, and correct inventorship of the 634 Patent. Accordingly, there is a substantial, actual, and justiciable controversy between Plaintiffs and Defendants, who have adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 21. Defendants are subject to personal jurisdiction in this Court because

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Defendants all reside in Arizona, they have continuous and systematic contacts with Arizona, they have purposefully availed themselves of the privilege of conducting business in Arizona, the allegations in this Complaint arise out of and relate to Defendants forum-related activities, and it is reasonable for the Court to exercise personal jurisdiction over Defendants. 22. Venue is proper in this Court under 28 U.S.C. 1391(b) and (c). DEFENDANTS SCHEME TO PUT POF OUT OF BUSINESS 23. Plaintiffs design, manufacture, and distribute firearms and parts for firearms

that are known in the industry to be high-quality, rugged, reliable, accurate, dependable, and durable. Based in part on the quality of POFs products, POF has developed -5-

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substantial goodwill and consumer recognition in its federal and common law trademarks, including without limitation POF, POF-USA, and PATRIOT ORDNANCE FACTORY, under which it markets and sells the products, and consumers recognize POF as the source of these high-quality products. POF is able to sell its products at a premium price based in part on the quality of the products and POFs reputation and strong trademark rights. 24. Davies previously exclusively licensed United States Patent No. 6,694,660

(the 660 Patent) and United States Patent No. 7,827,722 (the 722 Patent) to POF (the Exclusive License) to permit POF to make, use, and sell products under those patents. 25. DeSomma recognized deficiencies in the designs embodied in the 660

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Patent and the 722 Patent and invented new designs to account for those deficiencies. Some of DeSommas inventions were included in the 048 Application that listed Davies and DeSomma as joint inventors. 26. DeSomma and POF manufactured and sold firearms that incorporated

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DeSommas inventions. Following Daviess suggestion, POF requested that Hogan and his company, Hogan Manufacturing, LLC (HMfg), manufacture certain parts including key partsfor POFs firearms. 27. POF provided computer files to Hogan and HMfg that contained the

manufacturing specifications for the parts for POFs firearms. 28. Hogan did not invent any of the subject matter disclosed or claimed in the

048 Application. 29. The parts Hogan and HMfg manufactured often departed from POFs

manufacturing specifications and were otherwise not up to the high-quality standards POF demanded for its firearms. 30. Davies, ADD, and Hogan, in late 2010 or early 2011, colluded to lure POFs

salesmen and marketers away from POF and to steal POFs customers, all in a coordinated plan to unfairly compete with POF and drive POF out of business. -6-

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

31.

Hogan knew how to manufacture parts for POFs firearms because POF

provided drawings to Hogan with specifications for how the parts were to be manufactured. 32. Based on the information Hogan received from POF, Hogan began

manufacturing counterfeit POF firearms and selling them at a price lower than POF was selling them, in an attempt to unfairly capitalize on the goodwill associated with POFs trademarks and its reputation as a manufacturer of high-quality firearms, and to steal customers from POF. 33. Because Davies and Hogan believed the Exclusive License prevented Hogan

from using the technology in the 660 Patent and the 722 Patent, Davies wrongfully induced POF to accept a nonexclusive license to the 660 Patent and the 722 Patent (the Nonexclusive License), based on misrepresentations that ADD would pay POF royalties ADD received from other licensees. The Nonexclusive License was signed by ADD and POF on January 10, 2011. 34. On information and belief, Davies, ADD, and Hogan colluded to deprive

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POF of the Exclusive License so that Davies also could license the 660 Patent and the 722 Patent to Hogan, so Hogan could manufacture and sell firearms. 35. On information and belief, Davies, ADD, and Hogan colluded to unlawfully

terminate the Exclusive License and the subsequent Nonexclusive License for the express purpose of putting POF out of business, because Davies, ADD, and Hogan believed Hogan could then manufacture and sell firearms without competition from POF, and so that ADD and Davies could reap the royalties related to Hogans manufacture and sale of the firearms. 36. In furtherance of their design, Davies and ADD filed a complaint with the

American Arbitration Association to terminate the Nonexclusive License, which Davies and ADD believe will preclude POF from selling certain firearms. POF is contesting Daviess and ADDs allegations in the arbitration, and the arbitration is still pending.

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

37.

In furtherance of their design, ADD and Davies sent the POF Letter on

August 24, 2012 alleging POF has directly or indirectly infringed at least claim 1 of the 634 Patent. 38. On information and belief, ADD and Davies sent the August 24, 2012 letter

on Hogans behalf, at Hogans direction, and to assert Hogans alleged rights under the 634 Patent as an inventor listed in the patent. 39. The POF Letter asserted that POF does not have any right to manufacture,

use, or sell its firearms referenced in the letter. 40. The POF Letter demanded that POF immediately: (1) cease and desist from manufacturing, using, selling, and offering for sale the Firearm and all other related firearms, and otherwise directly or indirectly infringing [sic] the 634 Patent; (2) provide us with an accounting of the itemized number of Firearms and all other related firearms that POF has sold, and the itemized gross dollar value of such sales since July 31, 2012; and (3) pay [ADD] and [Davies] any and all damages incurred as a result of the infringing activities. 41. The POF Letter asserted that POFs infringement of the 634 Patent has

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caused, and if continued, will continue to cause, [ADD] and [Davies] to suffer severe economic injury. 42. The POF Letter asserted that ADD and Davies are prepared to aggressively

protect their intellectual property rights. 43. The POF Letter concluded with the ultimatum that [i]f we do not receive a

response from you on or before September 7th, you will force us to contemplate the commencement of more formal remedial measures. Plaintiffs understood the POF Letter to threaten litigation if Plaintiffs did not comply will all the demands in the letter, based on the language of the letter and the Defendants prior course of dealing with Plaintiffs. 44. In tandem with the POF Letter, ADD and Davies sent a nearly identical

letter to Richard Dyke, Chief Executive Officer of Windham Weaponry, Inc. (Windham) on August 24, 2012. -8-

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

45.

Windham and POF have agreements relating to business matters other than

the firearms alleged to infringe the 634 Patent. 46. On information and belief, ADD, Davies, and/or their representatives never

viewed or analyzed a firearm made, used, sold, or offered for sale by Windham to determine whether or not Windham infringes the 634 Patent. 47. On information and belief, in furtherance of their design to put POF out of

business, ADD and Davies have sent, and will continue to send unless enjoined, similar letters to other businesses and individuals associated with POF, such as POFs distributors, suppliers, manufacturers, and customers. 48. The POF Letter characterizes ADD and/or Davies as the owner of U.S.

Patent No. 8,230,634 (emphasis added). 49. On information and belief, Davies and/or Hogan assigned their entire

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interest in the 634 Patent to ADD. 50. 51. 52. On information and belief, ADD is the sole owner of the 634 Patent. On information and belief, Davies is the sole owner of the 634 Patent. On information and belief, Hogan no longer holds an ownership interest in

the 634 Patent. 53. On information and belief, Davies and Hogan have ownership interests in

the 634 Patent. 54. On information and belief, ADD, Davies, and Hogan all have ownership

interests in the 634 Patent. COUNT ONE (Declaratory Judgment of Invalidity of the 634 Patent) 55. Plaintiffs reallege and incorporate by reference the preceding paragraphs of

this Complaint as though fully set forth herein. 56. The claims of the 634 Patent are invalid for failing to meet the conditions

of patentability set forth in 35 U.S.C. 101, 102, 103, and/or 112.

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57.

Davies and Hogan are not the inventors of the subject matter claimed in one

or more claims of the 634 Patent, so the 634 Patent is invalid, at a minimum, under 35 U.S.C. 101 and 102(f). 58. A firearm (the Prior Art Firearm) disclosed and claimed in the 634 Patent

was in public use or on sale in this country more than one year prior to July 2, 2009, the filing date of the 048 Application, which the 634 Patent claims priority to. 59. Any differences between the Prior Art Firearm and the alleged invention

claimed in the 634 Patent are such that the subject matter as a whole would have been obvious, at the time the invention was made, to a person having ordinary skill in the art to which the subject matter of the 634 Patent pertains. 60. Accordingly, the claims of the 634 Patent are invalid under 35 U.S.C.

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102 and/or 103 because, at a minimum, and without limitation, they are neither novel nor nonobvious in light of the Prior Art Firearm, which was in public use or on sale in this country more than one year prior to July 2, 2009. 61. Moreover, the 048 Application was published on January 6, 2011 as

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Publication No. 2011/0000119, the 048 Application listed different inventors than the 634 Patent, and the alleged invention in the 634 Patent was described in the 048 Application. The alleged invention in the 634 Patent was by another, and the 634 Patent is invalid under 35 U.S.C. 102(e)(1). 62. An actual and justiciable controversy exists between Plaintiffs and

Defendants regarding the invalidity of the 634 Patent. 63. Plaintiffs are entitled to a declaratory judgment that the claims of the 634

Patent are invalid. 64. Unless enjoined, Defendants will continue to make allegations that Plaintiffs

infringe the 634 Patent. Accordingly, Plaintiffs are entitled to an injunction, preliminarily and permanently enjoining Defendants from making allegations that Plaintiffs infringe the 634 Patent.

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

65.

This is an exceptional case entitling Plaintiffs to an award of attorneys fees

incurred in connection with this action under 35 U.S.C. 285. COUNT TWO (Declaratory Judgment of Unenforceability of the 634 Patent) 66. Plaintiffs reallege and incorporate by reference the preceding paragraphs of

this Complaint as though fully set forth herein. 67. as inventors. 68. Davies and Hogan filed United States Patent Application No. 13/105,893 The 048 Application was filed on July 2, 2009 with DeSomma and Davies

(the 893 Application) on May 12, 2011 with Davies and Hogan as the only inventors. The 893 Application is a continuation of the 048 Application. The 893 Application matured into the 634 Patent, which issued on July 31, 2012. 69. publication. 70. Neither Davies nor Hogan told POF or DeSomma that they had filed the Davies and Hogan filed the 893 Application with a request for non-

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893 Application. 71. Both the filing of the 893 Application and the non-publication request were

in furtherance of Defendants scheme to put POF out of business. The non-publication request had the effect of hiding the details of the 893 Applications prosecution so Plaintiffs would not know about the details of the 893 Application or Daviess and Hogans intentional, deliberate and fraudulent actions in failing to disclose material information to the PTO and intentionally disclosing inaccurate inventorship information including by excluding DeSomma as an inventorall with a specific intent to deceive the PTO. 72. Neither POF nor DeSomma knew of the substance of the 893 Application

until it issued as the 634 Patent. 73. The Prior Art Firearm, disclosed and claimed in the 634 Patent, was in

public use or on sale in this country more than one year prior to July 2, 2009, the filing - 11 -

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date of the 048 Application, which the 634 Patent claims priority to. On information and belief, Hogan manufactured parts for the Prior Art Firearm and knew that it was in public use or on sale more than one year prior to July 2, 2009. On information and belief, Davies also knew of the existence of the Prior Art Firearm. 74. During prosecution of the 048 Application and the 634 Patent, Defendants

did not disclose the Prior Art Firearm to the PTO. 75. Defendants did not comply with their duty of disclosure to the PTO under

37 C.F.R. 1.56(a) because they did not disclose the Prior Art Firearm, even though, on information and belief, they knew of its existence. 76. Defendants knew the Prior Art Firearm was material to patentability because

they submitted manufacturing drawings (Hogan Drawings) to the PTO on March 7, 2012 that, on information and belief, depicted parts similar to those used in the Prior Art Firearm. Hogan represented that these drawings were from HMfg, and Hogan alleged the Hogan Drawings substantiated Defendants supposed invention of the subject matter claimed in the 634 Patent prior to July 2, 2009. 77. Hogan did not invent or develop the subject matter depicted in the Hogan

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Drawings, rather, DeSomma invented and developed the subject matter depicted in the Hogan Drawings. Hogan knew of DeSommas invention because DeSomma provided computer-aided drafting images to Hogan so that Hogan could manufacture firearm parts for POF. 78. On information and belief, Hogan intentionally redacted information from

the Hogan Drawings prior to submitting them to the PTO in order to mislead and deceive the PTO, because the redacted information would have indicated POF and/or DeSomma as the source of the subject matter depicted in the Hogan Drawings. 79. The Prior Art Firearm is in fact material to patentability because, under 37

C.F.R. 1.56(b)(1), it establishes a prima facie case of unpatentability of a claim, and, but for the nondisclosure of the Prior Art Firearm, the 634 Patent would not have issued.

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80.

Defendants did not file an information disclosure statement with the PTO

that listed the Prior Art Firearm during prosecution of the 634 Patent, even though Defendants knew of the Prior Art Firearm and that it was material to patentability. As a result, the PTO examiner did not consider the Prior Art Firearm during prosecution of the 634 Patent. 81. The 634 Patent is unenforceable because Hogan and/or Davies knew of the

Prior Art Firearm, knew it was material to patentability, made a deliberate decision to withhold it from the PTO, and had a subjective intent to deceive the PTO. 82. Patent. 83. 84. Correct inventorship is material to patentability of the 634 Patent. When the parent 048 Application was filed, Davies knew that DeSomma Davies and Hogan are listed as the sole inventors on the face of the 634

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was responsible for inventing the subject matter disclosed and claimed in the 048 Application. 85. At the time the 048 Application was filed, Davies knew that Hogan had not

invented any of the subject matter disclosed or claimed in the 048 Application. 86. 87. Davies did not include Hogan as an inventor in the 048 Application. Further, Davies signed a declaration in the 048 Application under 37 C.F.R.

1.63 on July 1, 2009 (the First Davies Declaration), wherein he avowed that he and DeSomma were the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought. By signing the declaration, Davies understood, regarding statements in the declaration, that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and may jeopardize the validity of the application or any patent issuing thereon. 88. The disclosure in the 634 Patent is substantially identical to the disclosure

in the 048 Application, because the 634 Patent is a continuation of the 048 Application, and, by definition, the 634 Patent cannot add any new matter to the 048 Application.

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89.

Davies signed a declaration in the 634 Patent under 37 C.F.R. 1.63 on

May 11, 2011 (the Second Davies Declaration), wherein he avowed that Davies and Hogannot Davies and DeSommawere the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought. By signing the declaration Davies understood, regarding statements in the declaration, that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and may jeopardize the validity of the application or any patent issuing thereon. 90. In a statement filed with the PTO during prosecution of the 634 Patent,

Davies signed a declaration under 37 C.F.R. 1.131 (the Third Davies Declaration), wherein he avowed that Davies and Hogannot Davies and DeSommainvented subject matter disclosed in the 048 Application prior to July 2, 2009. But the Third Davies Declaration only included the undated Hogan Drawings, and no evidence that Davies or Hogan had conceived of the claimed invention prior to July 2, 2009. 91. The First Davies Declaration and the Second Davies Declaration cannot

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both contain true statements because they declare different inventorship of subject matter claimed in both the 048 Application and the 634 Patent. 92. The First Davies Declaration and the Third Davies Declaration cannot both

contain true statements regarding inventorship, because they relate to the same disclosure in the 048 Application, but they declare different inventorship of that disclosure. 93. Davies and Hogan made a deliberate decision to deceive the PTO by filing

declarations with inventor information they knew to be incorrect. 94. Davies and Hogan knew the inventor information was material to

patentability because the 634 Patent would have not issued if Davies and Hogan had not signed the Second Declaration when filing the 893 Application, which matured into the 634 Patent. 95. Further, Davies and Hogan knew the inventor information was material to

patentability because they had to file the Third Davies Declaration to avoid a rejection of the 893 Application. - 14 -

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96.

The intentional and knowing disclosure of incorrect inventorshipwhich is

material to patentabilityby Davies and Hogan, with an intent to deceive the PTO, during prosecution of the 048 Application (by Davies) and the 634 Patent (by Davies and Hogan), amounts to inequitable conduct. Thus, the 634 Patent is unenforceable. 97. An actual and justiciable controversy exists between Plaintiffs and

Defendants regarding the unenforceability of the 634 Patent. 98. Plaintiffs are entitled to a declaratory judgment that the claims of the 634

Patent are unenforceable. 99. Unless enjoined, Defendants will continue to make allegations that Plaintiffs

infringe the 634 Patent. Accordingly, Plaintiffs are entitled to an injunction, preliminarily and permanently enjoining Defendants from making allegations that Plaintiffs infringe the 634 Patent. 100. This is an exceptional case entitling Plaintiffs to an award of attorneys fees

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incurred in connection with this action under 35 U.S.C. 285. COUNT THREE (Declaratory Judgment of Noninfringement of the 634 Patent) 101. Plaintiffs reallege and incorporate by reference the preceding paragraphs of

this Complaint as though fully set forth herein. 102. Plaintiffs continue to sell the firearms that Defendants allege infringe the

634 Patent. Plaintiffs contend that the firearms have not, do not, and will not infringe any valid and/or enforceable claim of the 634 Patent. 103. An actual and justiciable controversy exists between Plaintiffs and

Defendants regarding noninfringement of the 634 Patent. 104. Plaintiffs are entitled to a declaratory judgment that they have not infringed,

directly or indirectly, and do not infringe, directly or indirectly, any valid and/or enforceable claim of the 634 Patent, either literally, or under the doctrine of equivalents. 105. This is an exceptional case entitling Plaintiffs to an award of attorneys fees

incurred in connection with this action under 35 U.S.C. 285. - 15 -

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COUNT FOUR (Correction of Inventorship of the 634 Patent under 35 U.S.C. 256) 106. Plaintiffs reallege and incorporate by reference the preceding paragraphs of

this Complaint as though fully set forth herein. 107. DeSomma is an inventor of subject matter claimed in the 634 Patent, as

evidenced by, without limitation, the First Davies Declaration and DeSommas invention of subject matter disclosed in the 048 Application. 108. Hogan is not an inventor of subject matter claimed in the 634 Patent, as

evidenced by, without limitation, Daviess statements in the First Davies Declaration. 109. 110. 111. DeSomma is not currently listed as an inventor of the 634 Patent. Hogan is currently listed as an inventor of the 634 Patent. As an inventor, DeSomma is entitled to certain rights in the 634 Patent,

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including without limitation those rights in 35 U.S.C. 261, 262. 112. The exclusion of DeSomma as an inventor of the 634 Patent did not arise

from any deceptive intention on DeSommas part, at a minimum because DeSomma was not consulted when Davies and Hogan filed the application that matured into the 634 Patent. 113. DeSomma is entitled to entry of judgment declaring DeSomma to be an

inventor of the 634 Patent, and declaring Hogan not to be an inventor of the 634 Patent, and issuance of an order directing the PTO to name DeSomma as an inventor, and remove Hogan as an inventor, as provided in 35 U.S.C. 256. COUNT FIVE (False Description and Misrepresentation of Fact under 15 U.S.C. 1125(a)) 114. Plaintiffs reallege and incorporate by reference the preceding paragraphs of

this Complaint as though fully set forth herein. 115. Defendants sent or caused to be sent the August 24, 2012 letter to Windham

(the Windham Letter).

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

116. 634 Patent. 117. commerce. 118.

In the Windham Letter, Defendants stated that POFs firearms infringe the

POFs firearms implicated in the Windham Letter travel in interstate

The infringement allegation in the Windham Letter is a false description or

misrepresentation of fact because the 634 Patent is invalid and/or unenforceable, and POFs firearms do not infringe any valid or enforceable claim of the 634 Patent. 119. On information and belief, Defendants have made similar false descriptions

or misrepresentations of fact about the 634 Patent and POFs firearms to POFs customers, suppliers, and distributors. 120. These false descriptions or misrepresentations of fact actually deceive or are

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likely to deceive a substantial segment of the recipients of the statements. 121. These false descriptions or misrepresentations of fact are material because

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they are likely to influence the decision to purchase POFs firearms. 122. These false descriptions or misrepresentations of fact have been made by

Defendants in bad faith based on Defendants knowledge that the 634 Patent is invalid and/or unenforceable and that POFs firearms do not infringe any valid or enforceable claim of the 634 Patent, and based on Defendants intent to put POF out of business. 123. These false descriptions or misrepresentations of fact have caused and will

continue to cause harm to Plaintiffs unless this Court enjoins Defendants from making the statements. 124. Defendants have made these false statements willfully, subjecting

Defendants to treble damages. COUNT SIX (Business Disparagement of POF) 125. Plaintiffs reallege and incorporate by reference the preceding paragraphs of

this Complaint as though fully set forth herein.

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

126.

The statements in the Windham Letter about the alleged infringement of the

634 Patent are false and defamatory, without limitation, because the 634 Patent is invalid and/or unenforceable, at least because of Daviess and Hogans intentionally false and misleading statements, omissions, and representations to the PTO regarding inventorship of the 634 Patent and regarding the Prior Art Firearm. 127. Defendants knew the allegations of infringement were false and defamatory

because Defendants knew the 634 Patent was invalid and/or unenforceable when Defendants caused the Windham Letter to be sent. At a minimum, Defendants acted in reckless disregard of the falsity of the statements in the Windham Letter or acted negligently in failing to ascertain them. 128. Defendants acted with actual malice in causing the Windham Letter to be

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sent, at least because the letter was part of Defendants scheme to put POF out of business. 129. On information and belief, Defendants have caused other letters to be sent to

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POFs customers, distributors, and suppliers that contain statements about POFs alleged infringement of the 634 Patent that Defendants know to be false and defamatory. 130. Defendants false and defamatory statements have damaged POF and

caused it harm. 131. POF is a for-profit company and Defendants false and defamatory

statements tend to prejudice POF in the conduct of its business or to deter others from dealing with POF. 132. Unless Defendants are enjoined by this Court, they will continue to make

false and defamatory statements that harm POF, prejudice POF in the conduct of its business, and deter others from dealing with POF.

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

PRAYER FOR RELIEF WHEREFORE, Plaintiffs pray for judgment in their favor and against Defendants as follows: 1. forth above; 2. 3. That the Court declare the 634 Patent is invalid; That the Court declare Plaintiffs have not infringed and are not infringing, For judgment in favor of Plaintiffs and against Defendants on the claims set

directly or indirectly, any valid or enforceable claim of the 634 Patent; 4. 5. That the Court declare the 634 Patent unenforceable; For judgment that DeSomma, and not Hogan, is an inventor of the 634

Patent, and issuance of an order directing the PTO to name DeSomma as an inventor, and remove Hogan as an inventor, of the 634 Patent; 6. 7. For judgment that this is an exceptional case under 35 U.S.C. 285; For an award of reasonable attorneys fees, including under 15 U.S.C.

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1117 and 35 U.S.C. 285; 8. 9. For damages resulting from Defendants business disparagement of POF; For damages resulting from the false descriptions and misrepresentations of

fact made by Defendants willfully and in bad faith; 10. 11. For an award of treble damages under 15 U.S.C. 1117; For injunctive relief, preliminarily and permanently enjoining against any

statement made by Defendants that relates to Plaintiffs alleged infringement of the 634 Patent; 12. 13. 14. 15. For an award of punitive damages; For costs and disbursements incurred by Plaintiffs; For an assessment of prejudgment interest; and For any other and further relief as the Court deems just and proper.

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L.L.P. LAW OFFICES One Arizona Center, 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 602.382.6000

DEMAND FOR JURY TRIAL Plaintiffs demand a jury trial under Rule 38 of the Federal Rules of Civil Procedure as to all issues in this lawsuit of which trial by jury is permitted. DATED this 31st day of August, 2012. SNELL & WILMER L.L.P.

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15724078

By: s/ David G. Barker Joseph G. Adams David G. Barker Mark W. Williams Matthew T. Schoonover One Arizona Center 400 E. Van Buren, Suite 1900 Phoenix, Arizona 85004-2202 Attorneys for Patriot Ordnance Factory, Inc. and Frank DeSomma

Snell & Wilmer

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