Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 1 of 8
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`
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`Kyle Chen (SBN 239501)
`kchen@gtlaw.com
`GREENBERG TRAURIG, LLP
`1900 University Avenue
`East Palo Alto, CA 94303
`Telephone: (650) 289.7887
`Facsimile: (650) 328.8508
`
`Mark R. Weinstein (SBN 193043)
`mweinstein@cooley.com
`Reuben H. Chen (SBN 228725)
`rchen@cooley.com
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Telephone:
`(650) 843-5000
`Facsimile:
`(650) 849-7400
`
`
`Attorneys for Plaintiffs
`Cooler Master Co., Ltd. and CMI USA, Inc.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
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`COOLER MASTER CO., LTD. and
`CMI USA, INC.,
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`
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`Plaintiffs,
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`v.
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`ASETEK DANMARK A/S,
`
`
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`Defendant.
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`
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`CASE NO. 3:21-cv-4627
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
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`DEMAND FOR JURY TRIAL
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`COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 2 of 8
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`Plaintiffs Cooler Master Co., Ltd. (“CMC”) and CMI USA, Inc. (“CMI”) (collectively “Cooler
`Master”) file this Complaint against Defendant Asetek Danmark A/S (“Asetek”) seeking declaratory
`judgment of non-infringement as to U.S. Patent Nos. 8,240,362 (the “’362 patent”), 8,245,764 (the “’764
`patent”), 9,733,681 (the “’681 patent”), 10,078,354 (the “’354 patent”), 10,078,355 (the “’355 patent”),
`10,599,196 (the “’196 patent”), and 10,613,601 (the “’601 patent”) (collectively, “patents-in-suit”). Cooler
`Master states as follows:
`
`NATURE OF THE ACTION
`1.
`This is an action arising under the patent laws of the United States, 35 U.S.C. §§ 1 et seq.,
`and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, seeking a declaratory judgment of non-
`infringement of the patents-in-suit and for such other relief as the Court deems just and proper.
`
`THE PARTIES
`2.
`Plaintiff CMC is a Taiwanese corporation with a principal place of business at 9F, No. 788-
`1, Zhongzheng Rd., Zhonghe Dist., New Taipei City 23586, Taiwan, R.O.C.
`3.
`Plaintiff CMI is a California corporation with a principal place of business at 2929 East
`Imperial Highway, Suite 110, Brea, California 92821.
`4.
`On information and belief, Defendant Asetek is a Denmark corporation with a principal
`place of business at Assensvej 2, DK-9220 Aalborg East, Denmark.
`5.
`On information and belief, Asetek is the assignee of the patents-in-suit.
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`JURISDICTION AND VENUE
`6. The Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and
`1338(a) because this action involves claims arising under the patent laws of the United States, 35 U.S.C. §
`1 et seq., and under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
`7.
`An actual and justiciable controversy exists between Cooler Master and Asetek as to the
`non-infringement of the patents-in-suit. This is at least because Asetek has recently accused a Cooler
`Master liquid cooling device of infringing “Asetek’s U.S. Patents 8,240,362, 8,245,764, and other patents”
`in a letter sent to HP, Inc. (“HP”) and has attempted to enforce a previously entered consent judgment
`against Cooler Master in this District regarding the ’764 patent (see generally ECF No. 400).
`8.
`This Court has personal jurisdiction over Asetek because it has directed and continues to
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 3 of 8
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`direct acts to this District, including acts pertaining to the patents-in-suit. Asetek has, at least, purposefully
`directed its enforcement activities related to the patents-in-suit into the Northern District of California.
`9.
`Asetek’s threatening behavior with respect to Cooler Master started at least in 2016, during
`which Asetek’s counsel accused certain Cooler Master products of violating an injunction entered in this
`District following a 2014 jury trial that had taken place before Judge Tigar. (See generally Asetek Danmark
`A/S v. CMI USA, Inc., Case No. 3:13-cv-00457-JST (N.D. Cal.)). Asetek’s counsel also requested product
`samples from Cooler Master in this District for evaluation in light of the injunction, which were then
`provided to Asetek’s counsel in this District. See id.
`10.
`Asetek revived its threatening behavior with respect to Cooler Master in September 2020
`when it sent a letter to Cooler Master’s customer HP, accusing a Cooler Master liquid cooling device
`included in HP products of infringing the ’362, ’764, and other patents-in-suit and falling within the scope
`of the above-mentioned injunction (see id., ECF No. 399). HP, which has its principal place of business
`in this District, forwarded the letter to Cooler Master, which reached out to Asetek shortly after its receipt.
`Counsel for Asetek and Cooler Master subsequently met-and-conferred during October 2020 in connection
`with the letter, wherein Asetek maintained its threats with respect to certain Cooler Master products,
`confirming an actual and justiciable controversy giving rise to the need for declaratory judgment relief.
`11.
`Asetek has also recently filed a motion for contempt regarding the ’764 patent in this
`District, seeking to enforce the above-mentioned injunction. (See generally Asetek Danmark A/S v. CMI
`USA, Inc., Case No. 3:13-cv-00457-JST (N.D. Cal.), ECF No. 400.) If Asetek does not prevail on that
`motion (which should be the result), Cooler Master will remain under a threat of litigation from Asetek as
`it may remain free to pursue its infringement allegations though a new lawsuit.
`12.
`Aside from its purposeful conduct directed to this District, which gave rise to the present
`declaratory judgment action, Asetek has consented to personal jurisdiction in this District by initially filing
`suit during 2013 against Cooler Master in this District, by prosecuting the suit through judgment in this
`District, and by more recently attempting to enforce a consent judgment in this District, which had also
`been negotiated between Cooler Master and Asetek as part of their settlement, and then entered by the
`Court, in this District. (See Asetek Danmark A/S v. CMI USA, Inc., Case No. 3:13-cv-00457-JST (N.D.
`Cal.), ECF No. 16, ¶ 6 (“Asetek admits the allegations of paragraph 6” in ECF No. 15, ¶ 6, which states:
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 4 of 8
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`“Asetek has invoked the jurisdiction of this Court to bring claims for patent infringement against Cooler
`Master and others and is therefore subject to personal jurisdiction in this judicial district.”).)
`13.
`Asetek has also recently produced an expert witness to Cooler Master’s counsel located in
`this District for deposition, and has noticed a deposition of Cooler Master’s expert located in this District,
`with both depositions relating to Asetek’s attempted enforcement of the injunction in this District.
`14.
`For the foregoing reasons, this Court has personal jurisdiction over and proper venue for
`Asetek because it has purposefully availed itself of the benefits of California law and has more than
`sufficient minimum contacts with California, including those within this District, such that this declaratory
`judgment action meets the requirements of California’s long-arm statute and the U.S. Constitution’s due
`process clause.
`15.
`Asetek has also consented to venue in this District because Asetek has admitted that this
`District is a proper venue for litigating at least the ’362 and ’764 patents. (See id., ECF No. 16, ¶ 7 (“Asetek
`admits the allegations of paragraph 7” in ECF No. 15, ¶ 7, which states: “To the extent venue is proper in
`this judicial district for the resolution of Asetek’s claims, venue is proper with respect to Cooler Master’s
`Counterclaims pursuant to 28 U.S.C. §§ 1391 and 1400(b).”).)
`16.
`Asetek has also recently initiated lawsuits to litigate the patents-in-suit in this District. (See,
`e.g., N.D. Cal. Case No. 3:19-cv-00410-EMC (currently pending), ECF No. 1, ¶ 1, ECF 212, ¶ 1.) Asetek
`has also in the past asserted patents among the patents-in-suit against at least Corsair Gaming, Inc. (N.D.
`Cal. Case No. 3:20-cv-06541-EMC (currently pending)), Asia Vital Components Co., Ltd. (N.D. Cal. Case
`No. 4:16-cv-07160-JST (closed April 17, 2019), and Newegg Inc. (N.D. Cal. Case No. 3:13-cv-00457
`(closed October 23, 2017)). Thus, this District is convenient for Asetek to litigate the patents-in-suit.
`17.
`For these reasons and the reasons set forth below, a justiciable controversy exists between
`the parties, which is of sufficient immediacy and reality to warrant declaratory relief in this District.
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`THE PATENTS-IN-SUIT
`18.
`On information and belief, the patents-in-suit consist of two patent families, each claiming
`priority to either the ’362 patent or the ’764 patent. Specifically, the ’354 and ’601 patents claim priority
`to the ’362 patent (collectively, the “’362 patent family”), and the ’681, ’355, and ’196 patents claim
`priority to the ’764 patent (collectively, the “’764 patent family”).
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 5 of 8
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`THE PARTIES’ DISPUTE CONCERNING THE PATENTS-IN-SUIT
`19.
`Trial in an earlier case between Asetek and CMI ended in late 2014 with a finding of
`infringement with respect to certain then-existing CMI products. (See Asetek Danmark A/S v. CMI USA,
`Inc., Case No. 3:13-cv-00457-JST (N.D. Cal.), ECF No. 219 (Final Jury Verdict Form), at 2.) An
`injunction was entered against Cooler Master, which CMI appealed to the Federal Circuit.
`20. With assistance by new counsel, Cooler Master proceeded to redesign its cooling products
`so they would not infringe Asetek’s patents and would thereby fall outside the scope of the injunction.
`21.
`During 2016, the parties met and conferred regarding a redesign by Cooler Master. Counsel
`for Cooler Master explained its non-infringement position with respect to the redesign, and detailed why
`the redesigned products were different from the products at issue in the 2014 trial, and why the redesigned
`products did not infringe. In July 2016, Cooler Master’s counsel provided Asetek’s counsel with a redesign
`prototype prior to its implementation into production for Asetek’s evaluation in view of the injunction.
`22.
`The Federal Circuit subsequently vacated the injunction against CMC and remanded the
`case. The parties then settled under a consent judgment approved by the Court in 2017, which stated that
`“[n]o liability of CMC has been established against or admitted by CMC, but to resolve the case and to
`conserve resources, CMC agrees to be bound by” the prior injunction. (See id., ECF No. 399.)
`23.
`The parties had not communicated since the entry of the consent judgment until after
`September 2020 when Asetek sent the above-mentioned letter to HP, claiming that a Cooler Master
`provided liquid cooling device included in HP products infringed the ’362, ’764, and other patents-in-suit
`and was subject to the injunction. HP forwarded the letter to Cooler Master, which forwarded the letter to
`Cooler Master’s counsel on October 12, 2020. The next day, Cooler Master’s counsel initiated and
`conducted a meet-and-confer with Asetek’s counsel, reaffirming the same position that Cooler Master’s
`counsel had presented more than four years back. Asetek’s counsel disagreed with Cooler Master’s counsel
`with respect to the non-infringement position and maintained that the Cooler Master provided liquid
`cooling device included in the HP products infringed.
`24.
`On May 10, 2021, Asetek filed a motion for contempt sanctions based on the consent
`judgment, in which Asetek alleged that Cooler Master was infringing the ’764 patent. (See generally
`Asetek Danmark A/S v. CMI USA, Inc., Case No. 3:13-cv-00457-JST, ECF No. 400.) In particular, the
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 6 of 8
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`motion accuses Cooler Master’s “liquid coolers in the HP, Lenovo, and potentially other computers,”
`including without limitation the “HP Omen Liquid Cooler” and the “Lenovo Legion T730 Liquid Cooler”
`of infringing the ’764 patent. (See id. at 8-9, 19.)
`25.
`Before filing the motion, Asetek had recently asserted patents in both the ’764 and ’362
`patent families against various parties, such as CoolIT Systems, Inc. (N.D. Cal. Case No. 3:19-cv-00410-
`EMC (currently pending)), Corsair Gaming, Inc. (N.D. Cal. Case No. 3:20-cv-06541-EMC (currently
`pending)), Shenzhen Apaltek Co., Ltd. (W.D. Tex. Case No. 6:21-cv-00501 (currently pending)), Asia
`vital Components Co., Ltd. (N.D. Cal. Case No. 4:16-cv-07160-JST (closed April 17, 2019), and Newegg
`Inc. (N.D. Cal. Case No. 3:13-cv-00457 (closed October 23, 2017)).
`26.
`In light of Asetek’s litigious history with respect to the patents-in-suit, which include both
`the ’764 and ’362 patent families, and further in view of the motion and the letter to HP, as well as Asetek’s
`prior suit against Cooler Master (N.D. Cal. Case No. 3:13-cv-00457-JST), in which Asetek’s pending
`motion is accusing Cooler Master of infringement, Cooler Master has been placed in a reasonable
`apprehension of suit by Asetek under the patents-in-suit. As noted, in the event Asetek does not prevail
`on that motion (which should be the result), Cooler Master will remain under a cloud of threatened
`litigation from Asetek as it may remain free to pursue infringement though a new action. This cloud would
`be exacerbated by Asetek’s history of long delays or periods of inactivity with respect to its infringement
`allegations. For example, as detailed above, Asetek first threatened Cooler Master with respect to the
`redesigned products in 2016, but subsequently dropped the matter until September 2020. This lingering
`cloud confirms the actual and justiciable controversy giving rise to the need for declaratory judgment relief.
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`FIRST CLAIM FOR RELIEF
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`(Declaratory Judgment of Non-Infringement of the Patents-in-Suit)
`27.
`Cooler Master incorporates each preceding paragraph by reference.
`28.
`Cooler Master has not infringed and does not infringe any claim of the patents-in-suit
`directly or indirectly, either literally or under the doctrine of equivalents.
`29.
`Asetek nevertheless disagrees and has continued to assert that certain Cooler Master
`products infringe the ’362, ’764, and other patents-in-suit.
`30.
`An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, exists between
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 7 of 8
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`Cooler Master and Asetek concerning non-infringement of the patents-in-suit.
`31.
`Cooler Master is therefore entitled to a declaratory judgment that it has not infringed
`the patents-in-suit, directly or indirectly, either literally or under the doctrine of equivalents.
`32.
`A judicial declaration is necessary and appropriate so that Cooler Master may ascertain its
`rights regarding the claims of the patents-in-suit.
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`PRAYER FOR RELIEF
`WHEREFORE, Cooler Master respectfully requests the following relief:
`A.
`That the Court enter a judgment declaring that neither Cooler Master nor any of the Cooler
`Master products has infringed nor is infringing any claim of the patents-in-suit, directly or indirectly, either
`literally or under the doctrine of equivalents;
`B.
`That the Court enter a judgment that this is an exceptional case under 35 U.S.C. § 285 and
`award to Cooler Master its costs, expenses, and reasonable attorneys’ fees incurred in this action;
`C.
`That the Court award Cooler Master any and all other relief to which Cooler Master may
`show itself to be entitled; and
`D.
`That the Court award Cooler Master any other relief it may deem just and proper under
`the circumstances.
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`DEMAND FOR JURY TRIAL
`Pursuant to Fed. R. Civ. P. 38(b) and Civil Local Rule 3-6, Cooler Master demands a trial by jury
`on all issues and claims so triable.
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`///
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`///
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`Case 5:21-cv-04627-VKD Document 1 Filed 06/16/21 Page 8 of 8
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`DATED: June 16, 2021
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`GREENBERG TRAURIG, LLP/COOLEY LLP
`
`
`By:
`/s/ Kyle D. Chen
`
`Kyle Chen (SBN 239501)
`kchen@gtlaw.com
`GREENBERG TRAURIG, LLP
`1900 University Avenue
`East Palo Alto, CA 94303
`Telephone: (650) 289.7887
`Facsimile: (650) 328.8508
`
`Mark R. Weinstein (SBN 193043)
`mweinstein@cooley.com
`Reuben H. Chen (SBN 228725)
`rchen@cooley.com
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Telephone:
`(650) 843-5000
`Facsimile:
`(650) 849-7400
`
`
`Attorneys for Plaintiffs
`Cooler Master Co., Ltd. and CMI USA, Inc.
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