Case 1:99-mc-09999 Document 465 Filed 07/30/15 Page 1 of 9 PageID #: 39634Case 1:15-cv-00661-SLR Document 1 Filed 07/30/15 Page 1 of 9 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`DNA GENOTEK INC.,
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`Plaintiff,
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`v.
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`C.A. No. ____________
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`SPECTRUM DNA; SPECTRUM SOLUTIONS
`L.L.C.; and SPECTRUM PACKAGING L.L.C.,
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`JURY TRIAL DEMANDED
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`Defendants.
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`COMPLAINT
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`Plaintiff DNA Genotek Inc. (“DNA Genotek”), by its attorneys, alleges as follows:
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`1.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, Title 35, United States Code, involving United States Patent No. 8,221,381 B2
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`(“the ’381 patent”) (attached as Exhibit A hereto).
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`PARTIES
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`2.
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`Plaintiff DNA Genotek is a Canadian corporation with its principal place of
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`business in Kanata, Ontario. DNA Genotek is a wholly-owned subsidiary of OraSure
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`Technologies, Inc., a Delaware corporation with its principal place of business in Bethlehem,
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`Pennsylvania.
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`3.
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`Upon information and belief, Defendants Spectrum DNA, Spectrum Solutions
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`L.L.C., and Spectrum Packaging, L.L.C. (collectively “Spectrum”) are Utah limited liability
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`companies with their principal place of business in Draper, Utah.
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`JURISDICTION AND VENUE
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`4.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, Title 35, Section 1, et seq. of the United States Code. This Court has subject
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`matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).
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`5.
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`This Court has personal jurisdiction over Spectrum because it has purposefully
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`availed itself of the privileges and benefits of the laws of the State of Delaware. Upon
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`information and belief, Spectrum, its agents, subsidiaries, employees, and/or affiliates sell
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`products in Delaware and ship products to Delaware that infringe the ’381 Patent. Spectrum
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`maintains at least two websites. It registered the domain name, www.spectrum-dna.com, on July
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`28, 2015. Spectrum also hired a marketing company that launched an additional website,
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`through which Spectrum markets its DNA collection devices throughout the United States,
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`including Delaware. On information and belief, before July 28, 2015, Spectrum concealed its
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`making, using, selling, and offering for sale of the Spectrum product from DNA Genotek and
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`much of the public. Spectrum, its agents, subsidiaries, employees, and/or affiliates target
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`customers with ties to Delaware through at least one of their websites, which describes Spectrum
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`as a company responding to a need “in the DNA space calling for an innovative saliva DNA
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`collection device” and offering “an innovative device that is user friendly and produces excellent
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`clinical results.”
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`6.
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`Upon information and belief, Defendant Spectrum Solutions L.L.C. manufactures
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`at least one DNA saliva collection device that infringes the ‘381 Patent. Infringing products
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`include Spectrum Model No. SS-SAL-1. Upon information and belief, Defendant Spectrum
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`DNA sells and offers to sell DNA saliva collection devices that infringe the ‘381 Patent. Upon
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`information and belief, Defendant Spectrum Packaging L.L.C. assembles and sells DNA saliva
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`collection devices that are shipped in interstate commerce, including to Delaware, and that
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`infringe the’381 Patent.
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`7.
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`8.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b), (c), and 1400(b).
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`FACTUAL BACKGROUND
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`DNA Genotek is a leading provider of products for biological sample collection,
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`including oral fluid sample collection and stabilization solutions for molecular applications.
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`DNA Genotek has revolutionized the nucleic acid (DNA and RNA) collection market with
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`products that provide substantial advantages over traditional methods of biological sample
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`collection. DNA Genotek’s products incorporate proprietary technology that is protected by a
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`robust patent estate.
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`9.
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`DNA Genotek developed and patented its proprietary saliva DNA collection kits
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`(“DNA Genotek Saliva Collection Products”). DNA Genotek sells the DNA Genotek Saliva
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`Collection Products to customers and distributors worldwide.
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`10.
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`DNA Genotek is the owner by assignment of all right, title, and interest in and to
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`United States Patent No. 8,221,381 B2 (“the ’381 Patent”), entitled “Container System for
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`Releasably Storing a Substance,” which duly and legally issued to DNA Genotek, as assignee of
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`Rod Muir, Derek Kirkland, Ian Curry, Roy Sunstrum, Paul Lem, and H. Chaim Birnboim, on
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`July 17, 2012.
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`11.
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`DNA Genotek filed suit against Ancestry.com DNA, LLC (“Ancestry”) in this
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`District, alleging patent infringement, among other claims, because Ancestry offers for sale,
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`sells, markets, and distributes a saliva collection device (the “Ancestry Product”) that infringes
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`the ’381 Patent. Ancestry is a Delaware corporation that offers DNA testing services to
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`customers researching their ethnic and family histories. Ancestry customers receive in the mail a
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`DNA saliva collection kit and a return envelope to send the collection kit to a lab for DNA
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`testing. After the testing, Ancestry sends the customer information about the customer’s
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`ethnicity and relatives.
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`12.
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`DNA Genotek has learned that the Ancestry Product is also made, used, offered
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`for sale, marketed, distributed, and/or imported by Spectrum. Upon information and belief,
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`Spectrum also makes, uses, offers for sale, markets, distributes, and/or imports products other
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`than the Ancestry Product that infringe the ’381 Patent, including the Spectrum Saliva Collection
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`Kit (the “Spectrum Product”).
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`13.
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`Spectrum has been and is now infringing on one or more claims of the ’381
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`Patent.
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`14.
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`Spectrum infringes the ’381 Patent at least by making, using, offering for sale,
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`selling, marketing, distributing, and/or importing the Ancestry Product and/or the Spectrum
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`Product.
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`15.
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`Spectrum is infringing the ’381 Patent, either literally or by the doctrine of
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`equivalents.
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`16.
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`Spectrum was aware of the ’381 Patent when engaging in these knowing and
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`purposeful activities and was aware that the making, using, selling, or offering for sale of the
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`Ancestry Product or services incorporating the Ancestry Product constituted an act of
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`infringement of the ’381 Patent.
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`17.
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`Spectrum was aware of the ’381 Patent when engaging in these knowing and
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`purposeful activities and was aware that the making, using, selling, or offering for sale of the
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`Spectrum Product or services incorporating the Spectrum Product constituted an act of
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`infringement of the ’381 Patent.
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`18.
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`Spectrum has been aware of the ’381 Patent and the applications leading to the
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`publication of the ’381 Patent since at least November 14, 2014. The Spectrum Product is an
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`embodiment of a DNA saliva collection device depicted in PCT Patent Application No. WO
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`2015/017710 A1 (the “’701 Application”), entitled “Sample Collection Device,” which was filed
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`on July 31, 2014. On November 14, 2014, the patent office reviewing the ’701 Application
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`indicated that the device claimed in the ’701 Application would be “easily conceived from the
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`disclosure” two prior art references, including U.S. Patent Application Publication No.
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`20090216213 (the “’213 Application”). The ’213 Application ultimately issued as the ’381
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`Patent.
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`19.
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`Ancestry is the owner by assignment of the ’701 Application. The ’701
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`Application lists Frederico Gaeta as an inventor. Frederico Gaeta has been employed, at least as
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`a consultant, by both Ancestry, a Delaware corporation, and Spectrum.
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`20.
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`Federico Gaeta is listed on the Spectrum website in conjunction with the
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`development and production of the infringing Ancestry Product and/or the Spectrum Product.
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`21.
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`Upon information and belief, Spectrum decided to make the infringing Ancestry
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`Product and/or the infringing Spectrum Product after partnering with Ancestry, Spectrum’s
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`largest genotyping customer.
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`22.
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`The Spectrum website indicates that the Ancestry Product and/or the Spectrum
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`Product are labelled as “Patent Pending.” The pending application that encompasses the
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`embodiments of the Ancestry Product and/or the Spectrum Product is the ’701 Application.
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`23.
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`The Spectrum website includes a customer testimonial from an Ancestry
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`employee and inventor listed on the ’701 Application praising the company for its assistance in
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`making, using, offering for sale, selling, marketing, distributing, and/or importing the Ancestry
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`Product, which is offered for sale and sold in Delaware.
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`24.
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`On its website, Spectrum claims to have “[c]omplete fulfillment capabilities,”
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`including “[d]irect shipping” to customers. Examples of products shipped to the District of
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`Delaware described on Spectrum’s website include this device:
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`This is another example of the Spectrum Product described on Spectrum’s website:
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`25.
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` Spectrum’s website identifies the Ancestry Product as one such product that it
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`manufactures, sells, and ships. Upon information and belief, Spectrum offers for sale and/or
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`ships the Ancestry Product and/or the Spectrum Product to customers throughout the country,
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`including those located in or residing in Delaware.
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`26.
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`Upon information and belief, apart from its sales of the Ancestry Product and/or
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`the Spectrum Product to individuals throughout the country, including Delaware, Spectrum has
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`offered for sale the Ancestry Product and/or the Spectrum Product to a least one other Delaware
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`Corporation besides Ancestry, namely Complete Genomics Incorporated.
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`COUNT I – INFRINGEMENT OF THE ’381 PATENT
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`27.
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`DNA Genotek restates and incorporates by reference paragraphs 1-26, as if fully
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`set forth herein.
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`28.
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`Spectrum has been and is now infringing one or more claims of the ’381 patent,
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`either literally or by the doctrine of equivalents.
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`29.
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`Spectrum’s infringing activities include making, using, offering for sale, selling,
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`marketing, distributing, and/or importing products that infringe one or more claims of the ’381
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`Patent.
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`30.
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`Spectrum infringes the ’381 Patent at least by making, using, offering for sale,
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`selling, marketing, distributing, and/or importing the Ancestry Product or services incorporating
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`the Ancestry Product.
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`31.
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`Spectrum infringes the ’381 Patent at least by making, using, offering for sale,
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`selling, marketing, distributing, and/or importing the Spectrum Product or services incorporating
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`the Spectrum Product.
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`32.
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`33.
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`Spectrum’s infringing activities violate 35 U.S.C. § 271.
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`As a result of Spectrum’s infringement of the ’381 Patent, DNA Genotek has been
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`and will be damaged, and DNA Genotek is entitled to be compensated for such damages
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`pursuant to 35 U.S.C. § 284 in an amount to be determined at trial, but in no event less than a
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`reasonable royalty.
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`34.
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`Upon information and belief, Spectrum’s infringement of the ’381 Patent has been
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`and continues to be willful and deliberate.
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`35.
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`DNA Genotek has complied with any statutory requirement for placing a notice of
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`its patents on its products, including but not limited to its Oragene●DNA®,
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`Oragene●DISCOVER®, and Oragene●Dx® branded saliva collection kits.
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`36.
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`Upon information and belief, Spectrum’s infringement of the ’381 Patent will
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`continue unless enjoined by this Court. As a result of Spectrum’s infringement, DNA Genotek
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`has suffered and will continue to suffer irreparable harm for which there is no adequate remedy
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`at law. Accordingly, DNA Genotek is entitled to injunctive relief against such infringement.
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`37.
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`As a result of Spectrum’s infringement, DNA Genotek has suffered and will
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`continue to suffer significant damages.
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`PRAYER FOR RELIEF
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`WHEREFORE, DNA Genotek respectfully requests the following relief:
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`(a)
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`(b)
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`Entry of judgment that Spectrum has infringed the ’381 patent;
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`Preliminary and permanent injunctive relief enjoining Spectrum, its officers,
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`agents, servants, employees, attorneys, and all other persons in active concert or participation
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`with them, from directly or indirectly infringing the ’381 patent;
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`(c)
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`An award of damages adequate to compensate DNA Genotek for Spectrum’s
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`infringement of the ’381 patent;
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`(d)
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`An award of increased damages, under 35 U.S.C. § 284, in an amount three times
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`the actual damages awarded to DNA Genotek, by reason of Spectrum’s willful infringement of
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`the ’381 patent;
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`(e)
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`(f)
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`A declaration that this case is exceptional under 35 U.S.C. § 285;
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`An award of DNA Genotek’s costs and attorneys’ fees incurred in connection
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`with this action, under 35 U.S.C. § 285 and other applicable authority;
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`(g)
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`(h)
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`An award of pre-judgment interest; and
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`Such other and further relief as this Court deems just and proper.
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`DEMAND FOR JURY TRIAL
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`DNA Genotek hereby demands trial by jury on all issues so triable.
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`OF COUNSEL:
`David C. Doyle
`Brian M. Kramer
`MORRISON FOERSTER LLP
`12531 High Bluff Drive
`Suite 100
`San Diego, CA 92130
`(858) 314-5415
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`Dated: July 30, 2015
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`/s/ Karen E. Keller
`John W. Shaw (No. 3362)
`Karen E. Keller (No. 4489)
`300 Delaware Avenue, Suite 1120
`SHAW KELLER LLP
`Wilmington, DE 19801
`(302) 298-0700
`kkeller@shawkeller.com
`Attorneys for Plaintiff
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