MMI V Rich Godfrey - NOA

Case: 18-1127 Document: 1-2 Page: 1 Filed: 10/31/2017
MICHAEL GERITY, BAR NO. 015750

ISRAEL & GERITY, PLLC
1 202 EAST EARLL DRIVE, SUITE 440
PHOENIX, ARIZONA 85012
TELEPHONE: (602) 274-4400
2 FACSIMILE: (602) 274-4401
MGERITY@IG-LAW.COM
3
ATTORNEYS FOR PLAINTIFF/COUNTERDEFENDANT MMI, INC.
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UNITED STATES DISTRICT COURT
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FOR THE DISTRICT OF ARIZONA
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MMI, Inc., an Arizona corporation,
7 No. 2:15-cv-00449-SPL
Plaintiff,
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v.
9 NOTICE OF APPEAL
Rich Godfrey & Associates, Inc., an
10 Arizona Corporation, dba Coleman
Powersports; Richard W. Godfrey and
3300 North Central Avenue, Suite 2000
Susan Godfrey, husband and wife;

(602) 274-4400/ Fax: (602) 274-4401
ISRAEL & GERITY, P.L.L.C.
11
Cabelas, Inc., a foreign corporation;
Phoenix, Arizona 85012
12 BJs Wholesale Club, Inc., a foreign

corporation; Recon Enterprise, LLC,
13 an Arizona limited liability company;
John and Jane Does 1-97, and Black
14 and White Companies 1-97,
15 Defendants.
16
Rich Godfrey & Associates, Inc., dba
17 Coleman Powersports; Richard W.
Godfrey and Susan Godfrey; Cabelas,
18 Inc.; BJs Wholesale Club, Inc., Recon
Enterprise, LLC,
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Counterclaimants,
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v.
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MMI, Inc.,
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Counterdefendant.
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24 Notice is hereby given that the Plaintiff/Counterdefendant in the above named case,
25 MMI, Inc., hereby appeals to the United States Court of Appeals for the Federal Circuit
26 from the final Judgment entered in this action on September 29, 2017. This appeal
1 includes all rulings, Minute Entries, and Orders in the above-captioned case that are
2 incorporated into, part of, or the basis for the Judgment, specifically including, but not
3 limited to, the Order of September 29, 2017, granting Defendants Partial Motion for
4 Summary Judgment.
5 Note that counsel for Plaintiff has moved to withdraw as counsel of record for
Plaintiff. This Notice is filed by counsel in the District Court under a limited appearance
6
for preserving the appeals deadline, and is not intended as an appearance by counsel for
7
Plaintiff in the appeal.
8
RESPECTFULLY SUBMITTED this 30th day of October 2017.
9
10 ISRAEL & GERITY, PLLC
(602) 274-4400/ Fax: (602) 274-4401

11
12 By: /s/ Michael Gerity__________

Michael Gerity
13 Israel & Gerity, PLLC
202 East Earll Drive, Suite 440
14 Phoenix, Arizona 85012
15 Attorneys for Plaintiff/Counterdefendant
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1 CERTIFICATE OF SERVICE
2 I hereby certify that on this 30th day of October 2017, I electronically
transmitted Plaintiffs Notice of Appeal using the CM/ECF system for filing.
3
Sean Kealii Enos, Esq.
4 Jeffrey W. Johnson, Esq.
SCHMEISER, OLSEN & WATTS, LLP
5 18 E. University Drive, Suite 101
Mesa, Arizona 85201
6 Attorneys for Defendants/Counterclaimants
7
DATED this 30th day of October 2017.
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9 ISRAEL & GERITY, PLLC
10
(602) 274-4400/ Fax: (602) 274-4401
By: /s/Michael Gerity

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Michael Gerity
12 202 East Earll Drive, Suite 440

Suite 2000
13 Phoenix, Arizona 85012
14 Attorneys for Plaintiff/Counterdefendant
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CM/ECF - azd Page 1 of 14

APPEAL,CLOSED,STD
U.S. District Court

DISTRICT OF ARIZONA (Phoenix Division)
CIVIL DOCKET FOR CASE #: 2:15-cv-00449-SPL
MMI Incorporated v. Rich Godfrey & Associates Incorporated et al Date Filed: 03/12/2015
Assigned to: Judge Steven P Logan Date Terminated: 09/29/2017
Cause: 28:1338 Patent Infringement Jury Demand: Both
Nature of Suit: 830 Property Rights: Patent
Jurisdiction: Federal Question
Plaintiff
MMI Incorporated represented by Michael E Gerity
an Arizona corporation Israel & Gerity PLLC
202 E Earll Dr., Ste. 440
Phoenix, AZ 85012
602-274-4400
Fax: 602-274-4401
Email: mgerity@ig-law.com
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
V.
Defendant
Rich Godfrey & Associates Incorporated represented by Jeffrey William Johnson
an Arizona Corporation Schmeiser Olsen & Watts LLP - Mesa, AZ
doing business as 18 E University Dr., Ste. 101
Coleman Powersports Mesa, AZ 85201
480-655-0073
Fax: 480-655-9536
Email: jeffrey.johnson@azbar.org
LEAD ATTORNEY
Sean Kealii Enos

Schmeiser Olsen & Watts LLP - Mesa, AZ
18 E University Dr., Ste. 101
Mesa, AZ 85201
480-655-0073
Fax: 480-655-9536
Email: kenos@iplawusa.com
LEAD ATTORNEY
Defendant
Richard W Godfrey represented by Jeffrey William Johnson
husband (See above for address)
LEAD ATTORNEY
https://ecf.azd.circ9.dcn/cgi-bin/DktRpt.pl?357300719516593-L_1_0-1 10/30/2017
Sean Kealii Enos

(See above for address)
LEAD ATTORNEY
Defendant
Unknown Godfrey represented by Jeffrey William Johnson
named as: Jane Doe Godfrey - wife (See above for address)
TERMINATED: 11/25/2015 LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Defendant
Cabela's Incorporated represented by Jeffrey William Johnson
a foreign corporation (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Defendant
BJ's Wholesale Club Incorporated represented by Jeffrey William Johnson
LEAD ATTORNEY
Sean Kealii Enos

Defendant
Recon Enterprise LLC represented by Jeffrey William Johnson
an Arizona limited liability company (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Defendant
Unknown Parties represented by Jeffrey William Johnson
named as: John and Jane Does 1-97 and (See above for address)
Black and White Companies 1-97 LEAD ATTORNEY

Sean Kealii Enos

LEAD ATTORNEY
Defendant
Susan Godfrey represented by Jeffrey William Johnson
wife (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
Cabela's Incorporated represented by Jeffrey William Johnson
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
Unknown Godfrey represented by Jeffrey William Johnson
named as: Jane Doe Godfrey - wife (See above for address)
TERMINATED: 11/25/2015 LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
Richard W Godfrey represented by Jeffrey William Johnson
husband (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
Susan Godfrey represented by Jeffrey William Johnson

wife (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
Rich Godfrey & Associates Incorporated represented by Jeffrey William Johnson
an Arizona Corporation (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
Recon Enterprise LLC represented by Jeffrey William Johnson
an Arizona limited liability company (See above for address)
LEAD ATTORNEY
Sean Kealii Enos

LEAD ATTORNEY
Counter Claimant
BJ's Wholesale Club Incorporated represented by Jeffrey William Johnson
LEAD ATTORNEY
Sean Kealii Enos

V.
Counter Defendant
MMI Incorporated represented by Michael E Gerity
an Arizona corporation (See above for address)
LEAD ATTORNEY
Date Filed # Docket Text

10/30/2017 100 *NOTICE OF APPEAL to Federal Circuit re: 92 Clerks Judgment, 91 Order by MMI

Incorporated. Filing fee received: $ 505.00, receipt number 0970-14810970. (Gerity,
Michael) *Modified linkage on 10/30/2017 (DXD). (Entered: 10/30/2017)
10/27/2017 99 SEALED LODGED Proposed Exhibits A-C of Motion for Attorneys' Fees re: 98
MOTION to Seal Document Exhibits A-C Filed with Motion for Attorneys' Fees.
Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Rich
Godfrey & Associates Incorporated. (Enos, Sean) (Entered: 10/28/2017)
10/27/2017 98 MOTION to Seal Document Exhibits A-C Filed with Motion for Attorneys' Fees by
Rich Godfrey & Associates Incorporated. (Attachments: # 1 Proposed Order)(Enos,
Sean) (Entered: 10/27/2017)
10/27/2017 97 MOTION for Attorney Fees by Rich Godfrey & Associates Incorporated. (Attachments:
# 1 Statement of Consultation, # 2 Exhibits A-C, # 3 Proposed Order)(Enos, Sean)
(Entered: 10/27/2017)
10/16/2017 96 ORDER granting Defendants' 93 Motion for Extension of Time. Defendants shall have
until October 27, 2017 to file a Motion for Attorneys' Fees. Signed by Judge Steven P.
Logan on 10/16/17.(CLB) (Entered: 10/16/2017)
10/13/2017 95 AFFIDAVIT/SUPPORTING DOCUMENT to BILL OF COSTS re: 94 by BJ's
Wholesale Club Incorporated, Cabela's Incorporated, Richard W Godfrey, Susan
Godfrey, Unknown Godfrey, Recon Enterprise LLC, Rich Godfrey & Associates
Incorporated, Unknown Parties. (Enos, Sean) (Entered: 10/13/2017)
10/13/2017 94 BILL OF COSTS by BJ's Wholesale Club Incorporated, Cabela's Incorporated, Richard
W Godfrey, Susan Godfrey, Unknown Godfrey, Recon Enterprise LLC, Rich Godfrey
& Associates Incorporated, Unknown Parties. (Enos, Sean) (Entered: 10/13/2017)
10/13/2017 93 *MOTION for Extension of Time Of Deadline to File Motion for Attorneys' Fees by
BJ's Wholesale Club Incorporated, Cabela's Incorporated, Richard W Godfrey, Susan
Incorporated, Unknown Parties. (Attachments: # 1 Text of Proposed Order)(Enos, Sean)
*Modified to remove ex parte on 10/16/2017 (DXD). (Entered: 10/13/2017)
09/29/2017 92 CLERK'S JUDGMENT - IT IS ORDERED AND ADJUDGED that, pursuant to the
Court's Order filed September 29, 2017, which granted the Motion for Partial Summary
Judgment, judgment is entered in favor of Defendants and against Plaintiff. Plaintiff to
take nothing, and the complaint and action are dismissed. (DXD) (Entered: 09/29/2017)
09/29/2017 91 ORDER - Defendants' Partial Motion for Summary Judgment (Doc. 79 ) on Count I of
the Counterclaims seeking a declaration of invalidity is granted. The United Patent
Design Patent No. D591,203S is hereby declared to be invalid under 35 U.S.C. 102.
Count II of the Counterclaims seeking a declaration of non-infringement are dismissed.
The First Amended Complaint (Doc. 52 ) is dismissed in its entirety. The Clerk shall
terminate this case and enter judgment accordingly. Signed by Judge Steven P Logan on
9/29/17.(DXD) (Entered: 09/29/2017)
02/06/2017 90 STATEMENT OF FACTS re: 89 Reply to Response to Motion Defendants
Controverting Statement of Facts in Support of Defendants Reply to Plaintiffs Response
to Defendants Motion for Partial Summary Judgment by Defendants BJ's Wholesale
Club Incorporated, Cabela's Incorporated, Richard W Godfrey, Susan Godfrey, Recon
Enterprise LLC, Rich Godfrey & Associates Incorporated, Counter Claimants BJ's
Godfrey, Recon Enterprise LLC, Rich Godfrey & Associates Incorporated. (Enos,

02/06/2017 89 REPLY to Response to Motion re: 79 MOTION for Partial Summary Judgment filed by
BJ's Wholesale Club Incorporated, Cabela's Incorporated, Richard W Godfrey, Susan
01/20/2017 88 RESPONSE to Motion re: 79 MOTION for Partial Summary Judgment Plaintiff's
Corrected Response to Defendants' Motion For Partial Summary Judgment filed by
MMI Incorporated. (Gerity, Michael) (Entered: 01/20/2017)
01/20/2017 87 Additional Attachments to Main Document re: 86 Additional Attachments to Main
Document Exhibits I & J to Plaintiff's Controverting Statement of Facts in Opposition
to Defendants' Motion For Partial Summary Judgment by Plaintiff MMI Incorporated,
Counter Defendant MMI Incorporated. (Gerity, Michael) (Entered: 01/20/2017)
01/20/2017 86 Additional Attachments to Main Document re: 84 Statement of Facts Exhibits F-H to
Plaintiff's Controverting Statement of Facts in Opposition to Defendants' Motion For
Partial Summary Judgment by Plaintiff MMI Incorporated, Counter Defendant MMI
Incorporated. (Gerity, Michael) (Entered: 01/20/2017)
01/20/2017 85 Additional Attachments to Main Document re: 84 Statement of Facts Exhibits A-E to
Plaintiff's Controverting Statement of Facts in Opposition to Defendants' Motion For
Partial Summary Judgment by Plaintiff MMI Incorporated, Counter Defendant MMI
01/20/2017 84 STATEMENT OF FACTS re: 80 Statement of Facts Plaintiff's Controverting Statement
of Facts in Opposition to Defendants' Motion For Partial Summary Judgment by
Plaintiff MMI Incorporated, Counter Defendant MMI Incorporated. (Gerity, Michael)
(Entered: 01/20/2017)
01/20/2017 83 *CORRECTED Response filed at (Doc. 88 )--RESPONSE to Motion re: 79 MOTION
for Partial Summary Judgment Plaintiff's Response to Defendants' Motion For Partial
Summary Judgment filed by MMI Incorporated. (Gerity, Michael) Modified on
1/23/2017 (ATD). (Entered: 01/20/2017)
01/13/2017 82 ORDER granting 81 Stipulation: Plaintiff shall have until January 20, 2017, to file a
Response to the 79 Motion for Partial Summary Judgment. Signed by Judge Steven P
Logan on 1/13/2017. (MMO) (Entered: 01/13/2017)
01/12/2017 81 *STIPULATION Extension of Time to File Response re: 79 MOTION for Partial
Summary Judgment, 80 Statement of Facts by MMI Incorporated. (Attachments: # 1
Text of Proposed Order)(Gerity, Michael) *Modified to clarify text on 1/13/2017
(DXD). (Entered: 01/12/2017)
12/09/2016 80 STATEMENT OF FACTS re: 79 MOTION for Partial Summary Judgment by
Defendants BJ's Wholesale Club Incorporated, Cabela's Incorporated, Richard W
Godfrey, Susan Godfrey, Recon Enterprise LLC, Rich Godfrey & Associates
Incorporated, Counter Claimants BJ's Wholesale Club Incorporated, Cabela's
Incorporated, Richard W Godfrey, Susan Godfrey, Recon Enterprise LLC, Rich
Godfrey & Associates Incorporated. (Attachments: # 1 Exhibit I Part 1, # 2 Exhibit I
Part 2, # 3 Exhibit II, # 4 Exhibit III)(Enos, Sean) (Entered: 12/09/2016)
12/09/2016 79 MOTION for Partial Summary Judgment by BJ's Wholesale Club Incorporated,
Cabela's Incorporated, Richard W Godfrey, Susan Godfrey, Recon Enterprise LLC,
Rich Godfrey & Associates Incorporated. (Enos, Sean) (Entered: 12/09/2016)
11/17/2016 78 NOTICE of Service of Discovery filed by Cabela's Incorporated, Richard W Godfrey,
Susan Godfrey, Recon Enterprise LLC, Rich Godfrey & Associates Incorporated.

(Enos, Sean) (Entered: 11/17/2016)
11/17/2016 77 NOTICE of Service of Discovery filed by BJ's Wholesale Club Incorporated, Cabela's
Incorporated, Recon Enterprise LLC. (Enos, Sean) (Entered: 11/17/2016)
11/14/2016 76 NOTICE of Service of Discovery filed by MMI Incorporated. (Gerity, Michael)
(Entered: 11/14/2016)
(Entered: 11/14/2016)
09/30/2016 74 ORDER denying 66 Motion for Leave to Amend, 72 Stipulated Motion for Bifurcation,
73 Stipulation for Entry of Joint Confidentiality Protective Order and granting 71
Stipulated Motion to Extend: Depositions due by 11/1/2016. Discovery due by
11/11/2016. Dispositive motions due by 12/9/2016. Signed by Judge Steven P Logan on
9/30/16. (DXD) (Entered: 10/03/2016)
08/05/2016 73 STIPULATION Stipulation For Entry of Joint Confidentiality Protective Order by
MMI Incorporated. (Attachments: # 1 Text of Proposed Order)(Gerity, Michael)
(Entered: 08/05/2016)
06/24/2016 72 STIPULATION Stipulated Motion To Bifurcate by MMI Incorporated. (Attachments: #
1 Text of Proposed Order)(Gerity, Michael) (Entered: 06/24/2016)
06/24/2016 71 STIPULATION Stipulated Motion To Extend Discovery Deadlines by MMI
Incorporated. (Attachments: # 1 Text of Proposed Order)(Gerity, Michael) (Entered:
06/24/2016)
Incorporated, Richard W Godfrey, Susan Godfrey, Unknown Godfrey, Recon
Enterprise LLC, Rich Godfrey & Associates Incorporated, Unknown Parties. (Enos,
(Entered: 05/10/2016)
02/02/2016 68 NOTICE OF ATTORNEY'S CHANGE OF ADDRESS/FIRM NAME by Michael E
Gerity. (Gerity, Michael) (Entered: 02/02/2016)
01/22/2016 67 REPORT of Settlement Talks/Discussions Joint Report on Status of Settlement Talks
and Positions on Setting a Markman Hearing by MMI Incorporated. (Gerity, Michael)
(Entered: 01/22/2016)
01/13/2016 66 MOTION to Amend/Correct 52 Amended Complaint, 1 Complaint Plaintiff's Motion
For Leave To File Second Amended Complaint by MMI Incorporated. (Attachments: #
1 Text of Proposed Order)(Gerity, Michael) (Entered: 01/13/2016)
12/29/2015 65 ORDER granting 64 Motion for Extension of Time. The deadline for joining parties,
amending pleadings, and filing supplemental pleadings in accordance with the local and
federal rules shall be January 13, 2016. Signed by Judge Steven P. Logan on 12/29/15.
(CLB) (Entered: 12/29/2015)
12/21/2015 64 Second MOTION for Extension of Time For Joining Parties, Amending Pleadings, and
Filing Supplemental Pleadings Stipulated Motion For Extension of Time For Joining
Parties, Amending Pleadings, and Filing Supplemental Pleadings (Second Request) by
(Entered: 12/21/2015)

12/16/2015 63 ORDER that the Stipulation 61 is granted. The deadline for joining parties, amending
pleadings, and filing supplemental pleadings in accordance with the local and federal
rules shall be December 21, 2015. Signed by Judge Steven P. Logan on 12/16/15.(CLB)
(Entered: 12/16/2015)
12/14/2015 62 MINUTE ORDER for proceedings held before Magistrate Judge Michelle H Burns:
Settlement Conference held on 12/14/2015. Present were: Micchael Gerity with and for
Plaintiff; Sean Enos and Jeffrey Johnson with and for Defendants. A court reporter was
not present. The Settlement Conference was not recorded. A settlement was not
reached. Hearing held 1:15 PM to 4:15 PM. This is a TEXT ENTRY ONLY. There is
no PDF document associated with this entry. (MHB, ec) (Entered: 12/15/2015)
12/11/2015 61 MOTION for Extension of Time Joining Parties, Amending Pleadings and Filing
Supplemental Pleadings STIPULATED Motion For Extension of Time For Joining
Parties, Amending Pleadings, and Filing Supplemental Pleadings (First Request) by
(Entered: 12/11/2015)
12/10/2015 60 NOTICE of Filing - Copyright, Trademark or Patent Information filed by BJ's
Incorporated, Unknown Parties. (Enos, Sean) (Entered: 12/10/2015)
12/10/2015 59 MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent
Information. This case has been designated as a copyright, trademark, or patent case.
An answer, amended complaint, or other pleading 52 , 53 , 54 , 56 , 57 and 58 has been
filed that may include additional trademarks, patents, or copyrights allegedly violated
that were not previously included. Attached to this docket entry are the required form(s)
that may need to be completed by the party who filed the above document.
If your recently filed pleading adds or changes information related to the original
patents, trademarks, or copyright allegations, please complete the form that is
applicable to this particular case. In some cases, you may need to complete both forms.
Within seven (7) days, you must submit the required form(s) to the Clerk's Office.
Please complete the form and file it with the Court using the specific event: Notice of
Filing - Copyright, Trademark or Patent Information, found under the Other Filings
header. Please DO NOT mail the form directly to the Patent or Copyright Office. The
Clerk's Office will submit the form.
If there are no changes to the copyright, trademark, or patent information previously

submitted for this case, then the party who filed the above document must file a Notice,
within seven (7) days, indicating such using the specific event:Notice of Filing -
Copyright, Trademark or Patent Information, found under the Other Filings header.
(LSP) (Entered: 12/10/2015)
12/09/2015 58 ANSWER to 52 Amended Complaint with Jury Demand , COUNTERCLAIM against
All Plaintiffs by Cabela's Incorporated.(Enos, Sean) (Entered: 12/09/2015)
All Plaintiffs by BJ's Wholesale Club Incorporated.(Enos, Sean) (Entered: 12/09/2015)
All Plaintiffs by Recon Enterprise LLC.(Enos, Sean) (Entered: 12/09/2015)
12/09/2015 55 *ANSWER to 53 Answer to Amended Complaint, Counterclaim , COUNTERCLAIM
against All Plaintiffs by Richard W Godfrey(husband), Susan Godfrey.(Enos, Sean)

*Document duplicate of entry of (Doc. 53 ). Modified on 12/10/2015 (LSP). (Entered:
12/09/2015)
All Plaintiffs by Rich Godfrey & Associates Incorporated.(Enos, Sean) (Entered:
12/09/2015)
12/09/2015 53 * ANSWER to 52 Amended Complaint with Jury Demand , COUNTERCLAIM against
Richard W Godfrey, Susan Godfrey by Richard W Godfrey, Susan Godfrey.(Enos,
Sean) *Modified to indicate that the incorrect parties were selected as to whom the
complaint is filed against, corrected entry at 55 ; attorney contacted clerk on 12/10/2015
(ATD). (Entered: 12/09/2015)
11/25/2015 52 AMENDED COMPLAINT First against BJ's Wholesale Club Incorporated, Cabela's
Incorporated, Richard W Godfrey, Unknown Godfrey, Recon Enterprise LLC, Rich
Godfrey & Associates Incorporated, Unknown Parties filed by MMI Incorporated.
(Gerity, Michael) (Entered: 11/25/2015)
(Entered: 10/30/2015)
Godfrey & Associates Incorporated, Unknown Parties. (Enos, Sean) (Entered:
10/30/2015)
10/23/2015 49 ORDER setting Settlement Conference for 12/14/2015 at 01:15 PM in Courtroom 303,
401 West Washington Street, Phoenix, AZ 85003 before Magistrate Judge Michelle H
Burns. Each party shall provide the Court with the original of that party's Settlement
Conference Memoranda, at least, seven (7) business days before the Settlement
Conference. The Settlement Conference Memoranda shall NOT be filed with the Clerk.
Signed by Magistrate Judge Michelle H Burns on 10/22/15. (EJA) (Entered:
10/23/2015)
10/14/2015 48 ORDER that this case is referred by random lot to United States Magistrate Judge
Michelle H. Burns for the purpose of conducting a settlement conference. IT IS
FURTHER ORDERED that the parties shall contact the chambers of the Honorable
Michelle H. Burns at telephone number 602-322-7610 no later than October 21, 2015 to
schedule a settlement conference. Signed by Judge Steven P. Logan on 10/14/15. (CLB)
(Entered: 10/14/2015)
10/14/2015 47 RULE 16 CASE MANAGEMENT ORDER: All Discovery due by 6/24/2016.
Dispositive motions due by 7/15/2016. (See Order for details) Signed by Judge Steven
P. Logan on 10/14/15. (CLB) (Entered: 10/14/2015)
10/14/2015 46 IT IS ORDERED the Rule 16 Case Management Conference, presently set for
10/20/2015 at 10:30 AM before Judge Steven P. Logan is VACATED. Case
Management Order to follow. Ordered by Judge Steven P. Logan. (CLB)(This is a
TEXT ENTRY ONLY. There is no PDF document associated with this entry.)
(Entered: 10/14/2015)
10/13/2015 45 REPORT of Rule 26(f) Planning Meeting by MMI Incorporated. (Attachments: # 1
Text of Proposed Order)(Gerity, Michael) (Entered: 10/13/2015)
10/05/2015 44 ORDER that Plaintiff's Request for Continuance 43 is denied. Signed by Judge Steven
P. Logan on 10/5/15. (CLB) (Entered: 10/05/2015)

10/05/2015 43 NOTICE re: Notice Trial Conflict and Request for Continuance by MMI Incorporated .
09/24/2015 42 NOTICE of Filing - Copyright, Trademark or Patent Information filed by MMI
09/21/2015 41 NOTICE of Filing - Copyright, Trademark or Patent Information filed by BJ's
Wholesale Club Incorporated, Cabela's Incorporated, Richard W Godfrey, Unknown
An answer, amended complaint, or other pleading 39 has been filed that may include
additional trademarks, patents, or copyrights allegedly violated that were not previously
included. Attached to this docket entry are the required form(s) that may need to be
completed by the party who filed the above document.

Copyright, Trademark or Patent Information, found under the Other Filings header
(LSP) (Entered: 09/21/2015)
09/18/2015 39 *Counterdefendants' Answer to Counterclaims ANSWER to 35 Answer to Complaint,
Counterclaim, 31 Answer to Complaint, Counterclaim, 30 Answer to Complaint,
Counterclaim, 29 Answer to Complaint, Counterclaim, 28 Answer to Complaint,
Counterclaim by MMI Incorporated(an Arizona corporation).(Gerity, Michael)
*Modified to delete document numbers on 9/21/2015 (LSP). (Entered: 09/18/2015)
An answer, amended complaint, or other pleading 28 , 29 , 30 , 31 and 35 has been filed
that may include additional trademarks, patents, or copyrights allegedly violated that
were not previously included. Attached to this docket entry are the required form(s) that
may need to be completed by the party who filed the above document.

Copyright, Trademark or Patent Information, found under the Other Filings header.
(LAD) (Entered: 09/14/2015)
09/11/2015 37 ORDER SETTING RULE 16 CASE MANAGEMENT CONFERENCE for 10/20/2015
at 10:30 AM in Courtroom 501, 401 West Washington Street, Phoenix, AZ 85003
before Judge Steven P Logan. Signed by Judge Steven P Logan on 9/11/2015. (See
Order for details.) (Attachments: # 1 Proposed Order)(LFIG) (Entered: 09/11/2015)
09/11/2015 36 Corporate Disclosure Statement by BJ's Wholesale Club Incorporated. (Enos, Sean)
(Entered: 09/11/2015)
09/11/2015 35 ANSWER to 1 Complaint , COUNTERCLAIM against MMI Incorporated by BJ's
Wholesale Club Incorporated.(Enos, Sean) (Entered: 09/11/2015)
08/31/2015 34 *SERVICE EXECUTED filed by MMI Incorporated: Certified Mail Receipt re:
Summons, Complaint and Order upon BJ's Wholesale Club Incorporated on 8/24/2015.
(Gerity, Michael) *Modified to correct event type on 9/1/2015 (ACL). (Entered:
08/31/2015)
08/26/2015 33 Corporate Disclosure Statement by Rich Godfrey & Associates Incorporated. (Enos,
08/25/2015 32 Corporate Disclosure Statement by Cabela's Incorporated. (Enos, Sean) (Entered:
08/25/2015)
08/25/2015 31 ANSWER to 1 Complaint with Jury Demand , COUNTERCLAIM against MMI
Incorporated(an Arizona corporation) by Recon Enterprise LLC.(Enos, Sean) (Entered:
08/25/2015)
Incorporated by Rich Godfrey & Associates Incorporated.(Enos, Sean) (Entered:
08/25/2015)
Incorporated by Unknown Godfrey, Richard W Godfrey.(Enos, Sean) (Entered:
08/25/2015)
Incorporated by Cabela's Incorporated.(Enos, Sean) (Entered: 08/25/2015)
08/19/2015 27 ORDER granting in part Plaintiff's 26 Motion. Plaintiff shall have until August 31,
2015 to accomplish service on Defendant BJ's Wholesale Club Incorporated and file
proof of service with the Court. Signed by Judge Steven P. Logan on 8/19/15.(CLB)
(Entered: 08/19/2015)
08/10/2015 26 MOTION For Approval of Method of Service or To Allow Alternative Service Upon
Defendant BJ's Wholesale Club, Inc. re: 25 Service Executed by MMI Incorporated.
(Attachments: # 1 Text of Proposed Order)(Gerity, Michael) (Entered: 08/10/2015)
08/10/2015 25 SERVICE EXECUTED filed by MMI Incorporated: Certificate of Service re:
Summons, Complaint, Cover Sheet, Order upon BJ's Wholesale Club, Inc. on
08/06/2015. (Gerity, Michael) (Entered: 08/10/2015)
08/10/2015 24 ORDER granting Defendants' 23 Second Stipulated Motion to Extend Time.
Defendants Rich Godfrey & Associates, Inc., Richard and Jane Doe Godfrey, Cabelas,

Inc., and Recon Enterprise, LLC shall have until August 25, 2015, to file an answer to
the Complaint or otherwise respond as provided by Rule 12 of the Federal Rules of
Civil Procedure. Signed by Judge Steven P. Logan on 8/10/15.(CLB) (Entered:
08/10/2015)
08/07/2015 23 Second MOTION for Extension of Time to File Response/Reply by Cabela's
Godfrey & Associates Incorporated. (Attachments: # 1 Text of Proposed Order)(Enos,
07/23/2015 22 ORDER granting Defendant's 21 Stipulated Motion for Extension of Time. Defendants
Rich Godfrey & Associates, Inc., Richard and Jane Doe Godfrey, Cabelas, Inc., and
Recon Enterprise, LLC shall have until August 10, 2015, to file an answer to the
Complaint or otherwise respond as provided by Rule 12 of the Federal Rules of Civil
Procedure. Signed by Judge Steven P. Logan on 7/23/15.(CLB) (Entered: 07/23/2015)
07/22/2015 21 First MOTION for Extension of Time Extension of time , MOTION for Extension of
Time to File Answer by Cabela's Incorporated, Richard W Godfrey, Unknown Godfrey,
Recon Enterprise LLC, Rich Godfrey & Associates Incorporated, Unknown Parties.
(Attachments: # 1 Text of Proposed Order)(Enos, Sean) (Entered: 07/22/2015)
Summons, Complaint, Cover Sheet, Order upon Recon Enterprise, LLC on 07-15-15.
07/15/2015 19 Service Returned Unexecuted by MMI Incorporated : Summons, Complaint, Cover
Sheet, Order as to Recon Enterprise, LLC. (Gerity, Michael) (Entered: 07/15/2015)
07/10/2015 18 ORDER that Plaintiff's 17 MOTION for Extension of Time is granted in part.
ORDERED that Plaintiff shall have until August 10, 2015 to accomplish and file proof
of service on Defendants Recon Enterprise, LLC and BJ's Wholesale Club, Inc., or
show cause why this action should not be dismissed as to these Defendants for failure to
comply with Rule 4 of the Federal Rules of Civil Procedure. Signed by Judge Steven P
Logan on 7/10/2015. (LFIG) (Entered: 07/10/2015)
07/09/2015 17 MOTION for Extension of Service Deadline Plaintiff's Motion To Extend Service
Deadline by MMI Incorporated. (Attachments: # 1 Text of Proposed Order)(Gerity,
Michael) Modified on 7/10/2015 (REW). (Entered: 07/09/2015)
Summons, Complaint, Cover Sheet, Order upon Susan Godfrey on 07/05/2015. (Gerity,
Michael) (Entered: 07/08/2015)
Summons, Complaint, Cover Sheet, Order upon Richard W. Godfrey on 07/05/2015.
Summons, Complaint, Cover Sheet, Order upon Rich Godfrey & Associates Inc. dba
Coleman Powersports on 07/05/2015. (Gerity, Michael) (Entered: 07/08/2015)
Summons, Complaint, Cover Sheet, Order upon Cabela's Inc. on July 2, 2015. (Gerity,
Michael) (Entered: 07/07/2015)
06/17/2015 12 ORDER that on or before July 10, 2015, Plaintiff must show cause why this action
should not be dismissed for failure to comply with Rule 4(m) of the Federal Rules of

Civil Procedure. Signed by Judge Steven P. Logan on 6/17/15. (CLB) (Entered:
06/17/2015)
03/26/2015 11 ORDER that motions pursuant to Fed. R. Civ. P. 12(b) are discouraged if the defect can
be cured by filing an amended pleading. The parties must meet and confer prior to the
filing of such motions to determine whether it can be avoided. FURTHER ORDERED
that Plaintiff serve a copy of this Order upon Defendants and file a notice of service.
See attached Order for complete details. Signed by Judge Steven P. Logan on 3/26/15.
(CLB) (Entered: 03/26/2015)
03/26/2015 10 MINUTE ORDER: Pursuant to Local Rule 3.7(b), a request has been received for a
random reassignment of this case to a District Judge. FURTHER ORDERED Case
reassigned by random draw to Judge Steven P. Logan. All further pleadings/papers
should now list the following COMPLETE case number: CV-15-449-PHX-SPL. This is
a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (MAP)
(Entered: 03/26/2015)
03/25/2015 9 Party Elects Assignment of Case to District Judge Jurisdiction. This is a TEXT ENTRY
ONLY. There is no PDF document associated with this entry. (MAP) (Entered:
03/26/2015)
03/17/2015 8 NOTICE of Filing - Copyright, Trademark or Patent Information filed by MMI
03/12/2015 7 NOTICE TO FILER OF DEFICIENCY re: 1 Complaint filed by MMI Incorporated.
Other: Pursuant to the Electronic Case Filing Administrative Policies and Procedures
Manual Section II(B), attorneys are required to submit the Automated Civil Cover Sheet
when filing a new case. No further action is required. This is a TEXT ENTRY ONLY.
There is no PDF document associated with this entry. (REK) (Entered: 03/12/2015)
03/12/2015 6 MINUTE ORDER: Request for Copyright, Trademark, or Patent Information. This case
has been designated as a copyright, trademark, or patent case. The Clerk's Office is
required to provide information to the Patent and Trademark Office and/or Copyright
Office regarding this case. Attached to this docket entry are the required form(s) that
must be completed. Plaintiff shall complete the form that is applicable to this particular
case. In some cases, you may need to complete both forms.
Within seven (7) days, Plaintiff must submit the required form(s) to the Clerk's Office.
Clerk's Office will submit the form. If neither form is required for this case, please file a
notice indicating the reason the form is not necessary and use the event listed above.
This form must be updated if additional patents, copyrights, or trademarks are alleged in
a responsive pleading (REK) (Entered: 03/12/2015)
03/12/2015 5 Summons Issued as to BJ's Wholesale Club Incorporated, Cabela's Incorporated,
Richard W Godfrey, Unknown Godfrey, Recon Enterprise LLC, Rich Godfrey &
Associates Incorporated. (REK). *** IMPORTANT: When printing the summons,
select "Document and stamps" or "Document and comments" for the seal to appear on
the document. (Entered: 03/12/2015)
03/12/2015 4 Filing fee paid, receipt number 0970-11441561. This case has been assigned to the
Honorable Eileen S. Willett. All future pleadings or documents should bear the correct
case number: CV-15-00449-PHX-ESW. Magistrate Election form attached.
(Attachments: # 1 Magistrate Consent Form)(REK) (Entered: 03/12/2015)

03/12/2015 3 Corporate Disclosure Statement by MMI Incorporated. (submitted by Michael Gerity)
(REK) (Entered: 03/12/2015)
03/12/2015 2 SUMMONS Submitted by MMI Incorporated. (submitted by Michael Gerity)
(Attachments: # 1 Summons, # 2 Summons, # 3 Summons, # 4 Summons, # 5
Summons)(REK) (Entered: 03/12/2015)
03/12/2015 1 COMPLAINT. Filing fee received: $400.00, receipt number 0970-11441561 filed by
MMI Incorporated. (submitted by Michael Gerity) (Attachments: # 1 Civil Cover Sheet)
(REK) (Entered: 03/12/2015)
1 WO
2
3
4
5
6 IN THE UNITED STATES DISTRICT COURT
7 FOR THE DISTRICT OF ARIZONA
8 ) No. CV-15-00449-PHX-SPL
MMI, Inc.,
9 )
)
Plaintiff, ) ORDER
10 )
vs.
11 )
)
Rich Godfrey & Associates, Inc., et al., )
12 )
13 Defendants. )
)
14 )
15 Before the Court is Defendants partial Motion for Summary Judgment (Docs. 79;
16 80). The motion is fully briefed (Docs. 84-89), and no party has requested oral argument.
17 For the reasons that follow, the motion will be granted.
18 I. Background
19 In the summer of 2006, Christopher Martin, owner of Martin Manufacturing, Inc.,
20 built a prototype of a small, gas-powered, two-wheeled minibike. Later that fall, Martin
21 approached the president of Baja, Inc., then Richard Godfrey, to reproduce and sell the
22 minibike. Martin claims that the parties entered into an oral agreement to license the
23 minibike. Qunsheng Group Co. Ltd., a Chinese manufacturer, was selected to fabricate
24 the minibike. Using the proposed prototype, the minibike was manufactured and
25 marketed under variations of Doodlebug or DB-30.
26 Between August and September of 2006, retail distributor Pep Boys Manny Mo &
27 Jack of California placed orders for the minibikes with Baja. In turn, Baja placed
28 purchase orders for the minibikes with Qunsheng, one for 50 units and one for 196. The
1 minibikes were manufactured, invoiced, and shipped to the United States, and were
2 delivered to freight carriers in October 2006. On or before November 10, 2006, the
3 minibikes were delivered to Pep Boys distribution centers. They were then distributed to
4 Pep Boys retailors where they were offered for sale and sold to customers in the United
5 States. The minibike bearing VIN L4GSDGL056S00021 was among those manufactured
6 and delivered to the United States in 2006. (Doc. 80 6-8, 19-25, 27-32; Doc. 80-1 at
7 87; Doc. 84 19, 43-46.)
8 Between December 2006 and January 2007, feedback regarding the distributed
9 minibikes was received, and improvements were discussed with Martin. Martin then
10 made a prototype incorporating the modifications. (Doc. 84 51-53.)
11 On March 30 2007, Martin entered into a licensing agreement with Baja to
12 manufacture and distribute the Doodlebug 30 minibike (the MiniBike). (Doc. 85 at
13 13; Doc. 87 at 75.) The licensing agreement incorporated by reference blue prints, CAD
14 drawings, specifications, and design parameters of the minibike, as well as a sample
15 prototype of the minibike. A depiction of the Minibike, shown below, was also
16 attached to the agreement.
17
18
19
20
21
22
23
24
25
26
27
28
2
1 (Doc. 87 at 83, Exh. J.) A second production of the minibikes ran in the spring of 2007.
2 (Doc. 84 53, 65.)
3 In November of 2007, a dispute arose between Martin and Baja regarding the
4 ownership of the Baja Doodle Bug design. Martin sent a letter to purchasers informing
5 them that Martin Manufacturing had terminated all licensing of all products with Baja,
6 and had selected a new distributor and/or manufacturer. Baja ceased paying Martin
7 royalties for sales of the minibike.
8 On November 15, 2007, Martin filed a patent application for his minibike design
9 with the United States Patent Office. Following resubmission of an amended application,
10 on April 28, 2009, the patent office issued United States Design Patent No. D591,203S
11 (203 Patent), entitled Asymmetrical Mini Bike, the rights of which Martin assigned
12 to MMI.
13 MMI subsequently filed a complaint in federal court on March 3, 2010, MMI, Inc.
14 v. Baja, Inc., et al, CV-10-00496-PHX-RCJ (D. Ariz.), bringing one claim of patent
15 infringement against Baja and alleged distributors. (Doc. 80 at 69-75.) The case
16 concluded by settlement and was dismissed without prejudice on August 5, 2011.
17 Sometime between 2011 and 2012, MMI claims that Martin again entered into
18 discussions with Godfrey, now owner of Rich Godfrey & Associates, Inc. (dba Coleman
19 Powersports), to license and sell Martins minibike. MMI claims that during those
20 discussions, Godfrey made false representations which induced Martin to provide him
21 with his minibike prototype. (Doc. 52.) Godfrey took possession of the prototype and
22 refused to return it. Godfrey then shipped the prototype to China to be copied into an
23 almost identical mini bike model that directly incorporated the design elements of the
24 203 Patent ([] referred to as the Infringing Products). (Doc. 52 24.) He marketed,
25 imported, distributed and sold the Infringing Products, which he made available to
26 retail distributors for consumer purchase.
27 On March 12, 2015, MMI filed a second lawsuit in federal court commencing the
28 instant action. A First Amended Complaint was filed on November 25, 2015. (Doc. 52.)
3
1 MMI sues Richard Godfrey (and spouse Susan Godfrey), Rich Godfrey & Associates,
2 Inc., Cabelas, Inc., BJs Wholesale Club, Inc., and Recon Enterprise, LLC, bringing
3 claims against them for direct, induced, and contributory patent infringement, as well as
4 breach of contract, fraud, fraudulent inducement and negligent misrepresentation. MMI
5 seeks injunctive relief and damages.
6 Defendants each filed an answer and counterclaim against MMI bringing two
7 counts for declaratory judgment, seeking a declaration of invalidity and a declaration of
8 non-infringement. Defendants presently move for partial summary judgment on their
9 counterclaim of invalidity. (Doc. 79.)1
10 II. Legal Standards
11 Summary judgment is appropriate if the movant shows that there is no genuine
12 dispute as to any material fact and the movant is entitled to judgment as a matter of law.
13 Fed. R. Civ. P. 56(a). Summary judgment may also be entered against a party who fails
14 to make a showing sufficient to establish the existence of an element essential to that
15 partys case, and on which that party will bear the burden of proof at trial. Celotex Corp.
16 v. Catrett, 477 U.S. 317, 323 (1986).
17 The moving party bears the initial responsibility of informing the district court of
18 the basis for its motion, and identifying those portions of [the record] which it believes
19 demonstrate the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. If
20 the movant carries its initial burden of production, in response, the non-movant must do
21 more than simply show that there is some metaphysical doubt as to the material facts,
22 and instead must come forward with specific facts showing that there is a genuine issue
23 for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
24 (1986) (quoting Fed. R. Civ. P. 56(e)).
25 The court views the evidence and draws reasonable inferences in the light most
26 favorable to the party opposing the motion. United States v. Diebold, Inc., 369 U.S. 654,
27 1
MMI having withdrawn its claim for contributory patent infringement (Doc. 88 at
3), the Court does not address the alternative request for partial summary judgment on
28 that claim.
4
1 655 (1962). However, only disputes over facts that could affect the outcome of the suit
2 will preclude the entry of summary judgment, and the disputed evidence must be such
3 that a reasonable jury could return a verdict for the nonmoving party. Anderson v.
4 Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). See also Scott v. Harris, 550 U.S. 372,
5 380 (2007).
6 Patents are presumed to be valid. 35 U.S.C. 282; Microsoft Corp. v. i4i Limited
7 Partnerhsip, 131 S.Ct. 2238 (2011). To obtain summary judgment on invalidity, the
8 moving party must therefore overcome the presumption of validity by presenting clear
9 and convincing evidence of invalidity under 35 U.S.C. 101, 102, 103, 112, or 251.2
10 Honeywell Int'l. Inc. v. Universal Avionics Systems Corp., 488 F.3d 982, 996 (Fed. Cir.
11 2007); Apple Computer Inc. v. Articulate Sys. Inc., 234 F.3d 14, 26 (Fed. Cir. 2000).
12 III. Discussion
13 The Court finds that Defendants have met their burden, and have overcome the
14 presumption of validity of the 203 Patent.
15 Under 35 U.S.C. 102(b), 3 commonly referred to as the on-sale bar, a patent is
16 not valid if the invention was ... on sale in this country, more than one year prior to the
17 date of the application for patent in the United States. Application of the on-sale bar
18 requires that the subject of the barring activity: (1) anticipated the claimed invention or
19 would have rendered the claimed invention obvious; (2) was commercially sold or
20 offered for sale prior to the critical one-year date; and (3) was ready for patenting at the
21 time of the offer or sale. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68 (1998); Helsinn
22 Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 855 F.3d 1356, 1363 (Fed. Cir.
23 2017); Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir.
24 2
Generally, new evidence supporting an invalidity defense carries more weight in
an infringement action than evidence previously considered by the Examiner. Microsoft
25 Corp. v. i4i Ltd. P'ship, 131 S.Ct. 2238, 2251, (2011).
26 3
The language and structure of Title 35 was amended by the LeahySmith America
Invents Act (AIA). Pub.L. No. 11229, 125 Stat. 284 (Sept. 16, 2011). Because the
27 203 Patent was issued before September 16, 2011, the Court refers to the pre-AIA
versions of the statutes. See Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,
28 855 F.3d 1356, 1363 (Fed. Cir. 2017).
5
1 2008); Honeywell, supra; Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d
2 1336, 1352 (Fed. Cir. 2002). Whether a patent is invalid based on the on-sale bar is a
3 question of law based on underlying factual findings. See Netscape Communications
4 Corp. v. Konrad, 295 F.3d 1315, 1320 (Fed. Cir. 2002).
5 A. Anticipation
6 First, Defendants have presented clear and convincing evidence that the subject of
7 the barring activity anticipated MMIs patented minibike design.
8 The subject of a sale anticipates a claimed invention when it embodies the
9 patented design. See Crocs, Inc. v. International Trade Comn, 598 F.3d 1294, 1306
10 (Fed. Cir. 2010); Allen Engineering, 299 F.3d at 1352 (a devise fully anticipates a
11 claimed invention for purposes of the on-sale bar when it embodies all of the limitations
12 of the claim); Continental Plastic Containers v. Owens Brockway Plastic Prods., Inc.,
13 141 F.3d 1073, 1077 (Fed. Cir. 1998). To make this determination, the court first
14 construes the claimed design, if appropriate,4 and then compares the claimed design to
15 the alleged anticipatory product. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308,
16 1312-13 (Fed. Cir. 2001). In making a comparison, the court applies the ordinary
17 observer test, that is, the court determines whether the two designs are substantially the
18 same such that an ordinary observer would be deceived into thinking that the alleged
19 anticipatory product is the same as the patented design. Gorham Mfg. Co. v. White, 81
20 U.S. 511, 528 (1871); Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233,
21 1239 (Fed. Cir. 2009) (concluding that the ordinary observer test that applies to design
22 patent infringement applies to invalidity). The consideration looks to the similarities of
23 the overall designs, not the similarities of the individual features of the designs. Int'l
24 Seaway, 589 F.3d at 1239-41; Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678
25 (Fed. Cir. 2008); Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365,
26 4
[A] court may not invalidate the claims of a patent without construing the
disputed limitations of the claims and applying them to the allegedly invalidating acts.
27 However, a district court need not construe undisputed claim terms prior to issuing a
summary judgment of invalidity. Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587
28 F.3d 1324, 1332 (Fed. Cir. 2009) (internal citations and quotation marks omitted).
6
1 1371 (Fed. Cir. 2006). The overall consideration takes into account significant
2 differences between the two designs, as compared to minor or trivial differences that
3 necessarily exist between any two designs that are not exact copies of one another. Int'l
4 Seaway, 589 F.3d at 1243; see also Crocs, 598 F.3d at 1303 (significance depends on
5 the overall effect of the differences on the design).
6 Here, Defendants argue that the claimed design in the 203 Patent is embodied in
7 the minibike that was offered for sale in 2006 (referred to in short by the parties as the
8 2006 DB-30). To support this argument, Defendants offer a side-by-side comparison of
9 the figures in the 203 Patent and photographs of the minibike bearing VIN
10 L4GSDGL056S00021. (Doc. 80 at 51-67.) It is undisputed that the 2006 DB-30 minibike
11 was fabricated using Martins design, and that neither the design nor the manufactured
12 product had been identified or included as prior art in Martins 203 Patent application.
13 Before turning to the evidence presented by Defendants, however, the Court
14 observes that MMIs prior infringement allegations and arguments alone could support a
15 finding that its claimed design was anticipated by the design embodied in the 2006 DB-
16 30 minibike. See Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378
17 (Fed. Cir. 2001) ([T]hat which would literally infringe if later anticipates if earlier.);
18 see also Vanmoor v. WalMart Stores, Inc., 201 F.3d 1363, 1366 (Fed. Cir. 2000)
19 (Although Wal-Mart and the manufacturers bore the burden of proving that the
20 cartridges that were the subject of the pre-critical date sales anticipated the '331 patent,
21 that burden was satisfied by Vanmoors allegation that the accused cartridges infringe the
22 '331 patent.); Evans Cooling Systems, Inc. v. General Motors Corp., 125 F.3d 1448,
23 1451 (Fed. Cir. 1997) (Although GM bore the burden of proving that the LT1 engine
24 embodied the patented invention or rendered it obvious for purposes of the summary
25 judgment motion, this burden is met by Evans allegation, forming the sole basis for the
26 complaint, that the LT1 engine infringes.); Leader Technologies, Inc. v. Facebook, Inc.,
27 770 F. Supp. 2d 686, 716 (D. Del. 2011) (An admission by the patentee that a particular
28 product practices the claimed invention is sufficient to satisfy the defendants burden that
7
1 the product anticipates the claim for purpose of applying the on sale bar and public use
2 bar); Cummings v. Adidas, 716 F. Supp. 2d 323, 332 (S.D.N.Y. 2010) (finding burden
3 satisfied by the patentees allegations and admissions regarding infringement).
4 In the prior patent action, MMI claimed that the minibikes sold prior to November
5 15, 2006 infringed the 203 Patent.5 In its motion for sanctions against Baja in that case,
6 MMI summarized as follows:
7 This matter arises out of the infringement of a patent for a
motorized minibike known as the Baja Doodlebug DB30 (the
8 Minibike or Minibikes) owned by MMI. Baja initially
licensed the rights to the Minibike to Baja and Baja agreed to
9 pay a 5% royalty for all Minibikes sold by it minus any
returns. Baja ceased making royalty payments, but continued
10 to sell more than 100,000 of the Minibikes without
compensation to MMI.
11
After Baja ceased making royalty payments, MMI secured a
12 patent on the Minibike. The current action is to enforce
MMIs patent rights on the Minibike. A related state law case
13 is currently pending in Maricopa County Superior Court to
adjudicate Bajas breach of a contract between MMI and Baja
14 for the payment of royalties.
15
MMI, Inc. v. Baja, supra, Dkt. No. 83 at 2 (D. Ariz. Aug. 19, 2010).6 It requested that
16
Baja be sanctioned for failure to satisfy its discovery obligations, citing that its:
17
18
5
See Doc. 84 68 (The Controverting Statement of Facts filed by Plaintiff in that
19 matter (Dkt. 132, MMI v. Baja) very plainly set forth all of the above facts, and included
a Declaration by Mr. Martin that is included for the Courts review); Doc. 87, Exh. J,
20 MMI v. Baja CSOF 14 (Baja does not contest that it sold a product that infringes the
203 Patent. See Bajas Responses to Requests for Admissions 8-10, a copy of which is
21 attached hereto as Exhibit 3.); Doc. 87, Exh. J, MMI v. Baja CSOF 31 (During the
course of discovery, MMI sought admissions from Baja that it sold, offered for sale, and
22 advertised within the United States, minibikes that were substantially similar to the
patented minibike. Baja responding to these three requests for admissions by admitting
23 that: [I]f MMI claims that mini bikes sold [offered for sale or advertised] by Baja prior
to November 15, 2006 infringe U.S. Patent No. D591,203, then Baja admits those mini
24 bikes are substantially similar to the mini bikes depicted in U.S. Patent No. D591,203.
Baja denies the remainder of the request. See Defendant Baja, Inc.s Responses to
25 Plaintiffs Request for Admissions 8-10, copies of which are attached hereto as Exhibit
3.).
26
6
Matters contained in court filings and other public records are considered
27 appropriate subjects of judicial notice. See Reyns Pasta Bella, LLC v. Visa USA, Inc.,
442 F.3d 741, 746 n.6 (9th Cir. 2006) (citing Burbank-Glendale-Pasadena Airport Auth.
28 v. City of Burbank, 136 F.3d 1360, 1364 (9th Cir. 1998)).
8
1 MMIs second Request for Production requested Any and all

Communications pertaining to the Baja Doodlebug DB30,
2 MMI, Inc., Martin Manufacturing, Inc. and/or Christopher
Martin from June 2006 to the present. Other than a handful
3 of e-mails related to Minibike returns, Baja produced no e-
mails or written correspondence related to the Minibike.
4
MMI is aware of, and has produced to Baja, e-mails between
5 Baja representatives and MMI representatives relating to the
design and manufacture of the subject Minibike. See Various
6 emails, attached hereto as Exhibit F [dated December 28,
2006 - January 22, 2007].
7
8 MMI, Inc. v. Baja, supra, Dkt. Nos. 83 at 5; 83-1, Exh. F (D. Ariz. Aug. 19, 2010).
9 These matters aside, the Court finds Defendants have presented clear and
10 convincing evidence that the 2006 minibike anticipated the claimed design in the 203
11 Patent. The 203 Patent (Doc. 80 at 186-202) sets forth one claim: [t]he ornamental
12 design for an asymmetrical mini bike, as shown and described. The patent includes
13 sixteen drawing sheets (Figures 1-16) in which the boundaries between the claimed and
14 unclaimed portions of the minibike design are illustrated by the use of dots and broken
15 lines. The patent description reads: [t]he asymmetrical mini bike has aesthetic steel
16 hoops for the retention of the rear fender and a rear lift handle attachment. Figures
17 depicting the ornamental design claimed in the 203 Patent, and comparative images of
18 the 2006 DB-30 minibike are set forth below.7 The Court allows the figures to speak for
19 themselves. See Egyptian Goddess, 543 F.3d at 679 (Given the recognized difficulties
20 entailed in trying to describe a design in words, the preferable course ordinarily will be
21 for a district court not to attempt to construe a design patent claim by providing a
22 detailed verbal description of the claimed design.).
23 7
The functional, non-ornamental components of the minibike are not disputed and
have been excluded from the claimed design through the use of broken lines and dots. See
24 Door-Master, 256 F.3d at 131213 (In construing the claimed design, [] only the non-
functional aspects of an ornamental design as shown in a patent are proper bases for
25 design patent protection.). Because the design claimed is as shown and described in
the illustrations, and does not specify size or measure the balance of the frame (or any
26 other ornamental feature), the Court does not construe the claim as having a
symmetrical or asymmetrical frame. See Oatey Co. v. IPS Corp., 514 F.3d 1271,
27 1277 (Fed. Cir. 2008) (rejecting claim construction that would exclude embodiments
illustrated in the drawings); MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
28 1333 (Fed. Cir. 2007).
9
1 Figure 7, which appears on the face of the 203 Patent, is a right side perspective view of the minibike.
2
3
4
5
6
7
8
9
10
11
12 203 Patent Figure 7 VIN L4GSDGL056S00021 (2006)
13
14 Figure 1 is as a front view of the asymmetrical mini bike, showing [the inventors] new design.
15
16
17
18
19
20
21
22
23
24
25
26
27 203 Patent Figure 1 VIN L4GSDGL056S00021 (2006)
28
10
1 Undertaking a side-by-side comparison, considering all of the ornamental features

2 illustrated in the figures,8 the Court finds there is no genuine issue of material fact as to
3 whether an ordinary observer would believe the claimed design is substantially the same
4 as the design embodied in the 2006 DB-30 minibike. In one comparison after another, the
5 2006 DB-30 minibike appears to be nearly identical to the claimed design in the 203
6 Patent. The 2006 DB-30 minibike embodies the same overall appearance of the minibike
7 in the claimed design.
8 MMI argues that the two designs are plainly different; the claimed design differs
9 from the 2006 DB-30 minibike because it has an asymmetrical frame, whereas the 2006
10 DB-30 minibike has a symmetrical frame. (Docs. 84; 88.) MMI attaches a declaration by
11 Martin in which he sets forth that the patent figures clearly show that the patented mini
12 bike has an asymmetrical frame i.e., the frame of the mini bike is not the same on either
13 side of the plane running down the middle of the mini bike from front to back. The
14 asymmetry is created by bending the rear frame tubing on the right side of the minibike
15 (when viewed from the front) outward at a greater angle than the tubing on the left side.
16 The increased degree of being on the right side offsets the engine which is offset to the
17 left, thus creating a more balance appearance for the mini bike. The asymmetry is readily
18 apparent in the rear views of the Asymmetrical Mini Bike at Figures 3 & 11 of the 203
19 patent. (Doc. 85, Exh. B 11.)
20 ///
21 ///
22 ///
23 ///
24 ///
25 ///
26 8
The Court has considered the claimed design as shown and described in the 203
Patent and in each of the illustrations shown in Figures 1-16. (Doc. 80 at 186-202.) The
27 figures and images in this Order are merely illustrative examples. The Court has
considered the photographs of the 2006 DB-30 minibike taken by both parties in making
28 its comparison. (See Doc. 86, Exh. H; Doc. 80 at 51-67.)
11
1
2
3
4
5
6
7
8
9
10
11
12
13
14 203 Patent Figure 11 203 Patent Figure 3 VIN L4GSDGL056S00021 (2006)
15
16
17
18
19
20
21
22
23
24
25
26
27
203 Patent Figure 14 203 Patent Figure 6 VIN L4GSDGL056S00021 (2006)
28
12
1 The Court finds that any distinction of asymmetry or symmetry in the two designs
2 here is insufficient from the point of view of the ordinary observer to preclude a finding
3 of anticipation. The hypothetical ordinary observer would not be drawn to this aspect of
4 the claimed design as it is intentionally,... rather subtle. (Doc. 88; Doc. 84 69
5 (because of the nature of depicting the design on standard paper, the images in the
6 design patent are reduced from actual size by seven to eight times. This necessary
7 reduction from actual size takes critical elements of the design that are, intentionally,
8 rather subtle in real life, and makes them even more so in the drawings.).) In a side-by-
9 side comparison, the visual theme of bending and gapping of the frame is present in both.
10 The alleged variation of the frame in the claimed design does not change the overall
11 visual impression of the minibike; the overall balance in appearance is deceptively
12 similar, if not identical, to the 2006 DB-30 minibike.9 At most, MMI claims that
13 [c]ombining this newly invented asymmetrical frame with the standard, off-balance
14 structure of a minibike resulted in a far more balanced and aesthetically pleasing
15 product overall. (Doc. 88 at 7 (emphasis added).) Even when viewing this fact in the
16 light most favorable to MMI, it remains unavailing; the Court looks to whether the
17 alleged anticipatory product is substantially similar to the claimed design, not to the
18 subsequent commercial embodiment of it. See Payless Shoesource, Inc. v. Reebok Intern.
19 Ltd., 998 F.2d 985, 990 (Fed. Cir. 1993). Thus, to the extent there is a difference of
20 asymmetry of the frame in the two designs, it is the kind of minor or trivial difference[]
21 that necessarily exist[s] between any two designs that are not exact copies of one
22 another. Intl Seaway, 589 F.3d at 1243.
23 Because the 2006 DB-30 minibike embodies the overall effect of the design
24 claimed in the 203 Patent, an ordinary observer would be deceived into believing the
25 9
The substantial similarity of the two designs is consistent the fact MMI refers to
the differences as improvements or modifications, and the fabrication of the asymmetrical
26 minibike design as a second production run of the 2006 DB-30 minibike. (See e.g., Docs.
84 48, 51; 85 6-7 (referring to alleged design differences as improvements); Doc.
27 84 61-2 (referring to alleged design differences as modifications); Doc. 84 63-64
(discussing original and second production runs); Doc. 87 at 83 (The Doodle Bug is
28 back and better than ever.).)
13
1 2006 DB-30 minibike is the claimed design. Accordingly, the Court concludes that
2 Defendants have shown by clear and convincing evidence that the design in the 203
3 Patent is anticipated by the 2006 DB-30 minibike.
4 B. Commercial Offer for Sale
5 Second, Defendants have presented clear and convincing evidence that the
6 claimed invention was the subject of a commercial offer for sale before the critical date.
7 There is no dispute that the critical date is November 15, 2006, one year before the
8 203 Patent was filed. Nor does MMI dispute that there was a commercial offer for sale
9 of the 2006 DB-30 minibikes prior to that critical date. (See Doc. 88 at 5.) The 2006 DB-
10 30 minibikes were ordered in quantities, manufactured, sold, and delivered to retailor
11 distributors in the United States who offered them for sale to customers in the United
12 States prior to November 15, 2006. See Merck & Cie v. Watson Laboratories, Inc., 822
13 F.3d 1347, 1352 (Fed. Cir. 2016) (An offer to sell is sufficient to raise the on-sale bar to
14 patent validity, regardless of whether that sale is ever consummated); Atlanta
15 Attachment, 516 F.3d at 1366 (An offer to mass produce production models does not
16 square with experimentation under any standard; it is commercial exploitation.); Buildex
17 Inc. v. Kason Indus., 849 F.2d 1461, 1464 (Fed. Cir. 1988) (Even if no delivery is made
18 prior to the critical date, the existence of a sales contract or the signing of a purchase
19 agreement prior to that date has been held to demonstrate an on sale status for the
20 invention.).
21 Because MMI has not raised a genuine issue of material fact as to whether the
22 minibikes were subject to a commercial offer of sale, and because Defendants have
23 provided clear and convincing evidence of such sales, the factor of the on-sale bar is
24 satisfied.
25 C. Ready for Patenting
26 Third, Defendants have presented clear and convincing evidence that the claimed
27 invention was ready for patenting at the time of the commercial offer for sale.
28 The condition that the invention must be ready for patenting may be satisfied in
14
1 at least two ways: by proof of reduction to practice before the critical date; or by proof
2 that prior to the critical date the inventor had prepared drawings or other descriptions of
3 the invention that were sufficiently specific to enable a person skilled in the art to
4 practice the invention. Pfaff, 525 U.S. at 67-68. Here, the 2006 DB-30 minibike
5 embodying the claimed invention was manufactured in quantities and distributed for sale.
6 It follows that the claimed invention was reduced to practice and ready for patenting
7 prior to the critical date. See Continental, 141 F.3d at 1079 (design inventions are
8 reduced to practice as soon as an embodiment is constructed); Hamilton Beach Brands,
9 Inc. v. Sunbeam Products, Inc., 726 F.3d 1370, 1379 (Fed. Cir. 2013).
10 MMI counters that the claimed design was not ready for patenting because it did
11 not include the asymmetrical design. This argument fails. As previously addressed, the
12 2006 DB-30 minibike embodied the claimed invention. There is nothing in the 203
13 Patent that sets specific parameters for size or degree of asymmetry in the frame, and
14 [a]n invention can be considered reduced to practice even though it may later be refined
15 or improved. Atlanta Attachment, 516 F.3d at 1367 (quoting New Railhead Mfg. L.L.C.
16 v. Vermeer Mfg. Co., 298 F.3d 1290, 1297 (Fed. Cir. 2002)); STX, LLC v. Brine, Inc., 211
17 F.3d 588, 591 (Fed. Cir. 2000) (any fine tuning the Excalibur heads may have required
18 after the Barts sale does not undermine the conclusion that the invention was ready for
19 patenting.). Defendants have therefore also met their burden to show by clear and
20 convincing evidence that the claimed invention was ready for patenting in order to invoke
21 the on-sale bar.
22 IV. Conclusion
23 Defendants have overcome the presumption of validity by presenting clear and
24 convincing evidence that the patented minibike design was on-sale before the critical date
25 and the evidence of invalidity is such that no reasonable jury could find otherwise. Eli
26 Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). 10 Therefore, finding
27
10
Having reached this conclusion, the Court does not reach the alternative arguments
28 regarding invalidity on the basis of obviousness or indefiniteness.
15
1 Defendants have satisfied their burden of proof under 102(b), the Court will grant
2 summary judgment as to Defendants counterclaim on invalidity, and will declare the
3 203 Patent to be invalid. Plaintiffs patent infringement claims, and Defendants
4 counterclaim for a declaration of non-infringement will therefore be dismissed as moot.
5 See Commil USA, LLC v. Cisco Systems, Inc., 135 S.Ct. 1920, 1923 (2015) (To be sure,
6 if a patent is shown to be invalid, there is no patent to be infringed.).
7 Lastly, the Court observes that neither party has moved for summary judgment on
8 the remaining state law claims in the First Amended Complaint. Having reviewed those
9 claims, the Court finds that it lacks diversity jurisdiction (see Doc. 52 1-6), and
10 otherwise declines to exercise supplemental jurisdiction over those claims. See 28
11 U.S.C. 1367(c)(3); Carlsbad Tech., Inc. v. HIF Bio, Inc., 556 U.S. 635, 639
12 (2009); Oliver v. Ralphs Grocery Co., 654 F.3d 903, 911 (9th Cir. 2011); Gini v.
13 Las Vegas Metro. Police Dept, 40 F.3d 1041, 1046 (9th Cir. 1994). Therefore, the
14 state law claims will also be dismissed. Accordingly,
15 IT IS ORDERED:
16 1. That Defendants Partial Motion for Summary Judgment (Doc. 79) on Count I
17 of the Counterclaims seeking a declaration of invalidity is granted;
18 2. That United Patent Design Patent No. D591,203S is hereby declared to be
19 invalid under 35 U.S.C. 102;
20 3. That Count II of the Counterclaims seeking a declaration of non-infringement
21 are dismissed;
22 4. That the First Amended Complaint (Doc. 52) is dismissed in its entirety; and
23 5. That the Clerk of Court shall terminate this case and enter judgment
24 accordingly.
25 Dated this 29th day of September, 2017.
26
Honorable Steven P. Logan
27 United States District Judge
28
16
1
2
3
4
5
6 IN THE UNITED STATES DISTRICT COURT
7 FOR THE DISTRICT OF ARIZONA
8
9 MMI Incorporated, NO. CV-15-00449-PHX-SPL
10 Plaintiff,
JUDGMENT IN A CIVIL CASE
11 v.
12 Rich Godfrey & Associates Incorporated, et
al.,
13
Defendants.
14
15 Decision by Court. This action came for consideration before the Court. The
16 issues have been considered and a decision has been rendered.
17 IT IS ORDERED AND ADJUDGED that, pursuant to the Courts Order filed
18 September 29, 2017, which granted the Motion for Partial Summary Judgment, judgment
19 is entered in favor of Defendants and against Plaintiff. Plaintiff to take nothing, and the
20 complaint and action are dismissed.
21 Brian D. Karth
District Court Executive/Clerk of Court
22
23 September 29, 2017
s/ Danielle Draper
24 By Deputy Clerk
25
26
27
28

MMI V Rich Godfrey - NOA

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Case: 18-1127 Document: 1-2 Page: 1 Filed: 10/31/2017

MICHAEL GERITY, BAR NO. 015750

Susan Godfrey, husband and wife;

12 BJs Wholesale Club, Inc., a foreign

(602) 274-4400/ Fax: (602) 274-4401

12 By: /s/ Michael Gerity__________

(602) 274-4400/ Fax: (602) 274-4401

By: /s/Michael Gerity

12 202 East Earll Drive, Suite 440

Case: 18-1127 Document: 1-2 Page: 4 Filed: 10/31/2017

U.S. District Court

Sean Kealii Enos

Case: 18-1127 Document: 1-2 Page: 5 Filed: 10/31/2017

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Case: 18-1127 Document: 1-2 Page: 6 Filed: 10/31/2017

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Case: 18-1127 Document: 1-2 Page: 7 Filed: 10/31/2017

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Sean Kealii Enos

Date Filed # Docket Text

Case: 18-1127 Document: 1-2 Page: 8 Filed: 10/31/2017

Case: 18-1127 Document: 1-2 Page: 9 Filed: 10/31/2017

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If there are no changes to the copyright, trademark, or patent information previously

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If there are no changes to the copyright, trademark, or patent information previously

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1 MMIs second Request for Production requested Any and all

1 Undertaking a side-by-side comparison, considering all of the ornamental features

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