Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 1 of 17 PageID #: 415
`Case 1:17-cv—00868—JFB-SRF Document 20-1 Filed 09/05/17 Page 1 of 17 PageID #: 415
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`EXHIBIT A
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`EXHIBIT A
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`

`

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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 1 of 16 PageID #: 1Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 2 of 17 PageID #: 416
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`Civil Action No.
`
`
`JURY TRIAL DEMANDED
`
`SIPCO, LLC, and IP CO., LLC (d/b/a
`INTUS IQ)
`
` Plaintiff,
`
` v.
`
`STREETLINE, INC.; and KAPSCH
`TRAFFICCOM HOLDING CORP.
`
` Defendants.
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`
`
`
`This is an action for patent infringement in which Plaintiffs SIPCO, LLC and IP CO.,
`
`LLC (“Plaintiffs”) complains against Defendants Streetline, Inc. and Kapsch Trafficcom Holding
`
`Corp., all upon information and belief, as follows:
`
`PARTIES
`
`1.
`
`Plaintiff SIPCO, LLC (“SIPCO”) is a limited liability company organized and
`
`existing under the laws of the State of Georgia, having its principal office at 2600 Abbey Court,
`
`Alpharetta, Georgia, 30004.
`
`2.
`
`IP CO, LLC (d/b/a INTUS IQ) (“IP CO”) is a limited liability company organized
`
`and existing under the laws of the State of Georgia, having its principal office at 8215 Roswell
`
`Road, Building 900, Suite 950, Atlanta, Georgia 30350.
`
`3.
`
`Defendant Streetline Inc. is a corporation organized under the laws of Delaware,
`
`with its principal place of business located at 1200 Park Place, San Mateo, CA 94403
`
`

`

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`(“Streetline”). Streetline may be served with process by serving its registered agent,
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`Incorporating Services, Ltd., 3600 S Dupont Highway, Dover, DE 19901.
`
`4.
`
`Defendant Kapsch Trafficcom Holding Corp. is a corporation organized under the
`
`laws of Delaware, with its principal place of business in McLean, Virginia, and may be served
`
`with process by serving its registered agent, The Corporation Trust Company, Corporation Trust
`
`Center, 1209 Orange Street, Wilmington, DE 19801. Kapsch Trafficcom Holding Corp, is a
`
`wholly-owned subsidiary of Kapsch TrafficCom B.V., of Amsterdam, Netherlands, which is a
`
`wholly-owned subsidiary of Kapsch TrafficCom AG, of Vienna, Austria, a publicly held
`
`corporation.
`
`5.
`
`On or about April 16, 2015, Kapsch Trafficcom Holding Corp. acquired a
`
`majority and controlling interest in Streetline, so that Streetline operates as a wholly-owned
`
`subsidiary of Kapsch Trafficcom Holding Corp.
`
`6.
`
`Streetline and Kapsch Trafficcom Holding Corp. shall hereafter be collectively
`
`referenced as “Streetline,” unless the context otherwise dictates.
`
`JURISDICTION AND VENUE
`
`7.
`
`This action arises under the patent laws of the United States, Title 35 of the
`
`United States Code. Thus, this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§
`
`1331 and 1338(a).
`
`8.
`
`This Court has personal jurisdiction over Defendants by virtue of the Defendants
`
`being corporations created and existing under the laws of the State of Delaware.
`
`9.
`
`Venue is proper in this Judicial District as to each Defendant under 28 U.S.C. §§
`
`1391(c) and 1400(b) by virtue of the Defendants being corporations created and existing under
`
`Original Complaint for Patent Infringement
`- 2 -
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`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 3 of 16 PageID #: 3Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 4 of 17 PageID #: 418
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`the laws of the State of Delaware.
`
`PLAINTIFFS
`
`10.
`
`SIPCO and IP CO are small research, development and technology companies
`
`based in Atlanta, Georgia. T. David Petite is a founding member of both companies.
`
`11.
`
`In the 1990’s, through his own individual research and development efforts, Mr.
`
`Petite invented a large number of wireless control and distribution technology applications. The
`
`inventions resulting from Mr. Petite’s efforts include, but are not limited to, various ways of
`
`moving data as economically and seamlessly as possible over both wired and wireless networks.
`
`12.
`
`Through the 1990’s and early 2000’s investors contributed tens of millions of
`
`dollars for technology development and implementation of networks. Clients included Georgia
`
`Power, Alabama Power, Newnan Utilities GA, Johnson Controls, Synovus Bank and Grand
`
`Court Lifestyles residential living facilities.
`
`13.
`
`After proving that the technology worked in the field, several companies
`
`competed to purchase an exclusive license to Mr. Petite’s technology for the market known as
`
`“smart grid.” Landis+Gyr (http://www.landisgyr.com/) (previously Siemens Metering) took an
`
`exclusive license to the smart grid technology in 2002 and in 2005 purchased rights to the
`
`technology for utility applications for $30,000,000. Mr. Petite’s technology has been deployed
`
`in millions of meters deployed across North America and throughout the world.
`
`14.
`
`SIPCO retained the rights to the mesh network patents, and for use of the
`
`technology outside of the utility space. It still maintains ownership of the software, firmware,
`
`hardware and patent portfolio that resulted from Mr. Petite’s research and development efforts,
`
`and SIPCO continues to develop and deploy wireless technology applications and wireless
`
`Original Complaint for Patent Infringement
`- 3 -
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`

`

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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 4 of 16 PageID #: 4Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 5 of 17 PageID #: 419
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`technology systems throughout the United States.
`
`15.
`
`SIPCO’s patent portfolios (of which the patents in suit are a part) include
`
`inventions that are widely recognized as pioneering in various fields of use. As a result, over 75
`
`corporations have taken licenses to them. Licensees include companies operating in the vertical
`
`markets of Industrial Controls, Smart Grid, Building Automation, Network Backhaul, Home
`
`Appliance, Home Automation and Entertainment, Sensor Monitoring, and Internet Service
`
`Provisioning. Licensed products include products using standard wireless mesh protocols such as
`
`WirelessHART, ZigBee, IEEE 802.15.4, Z-Wave, and as well as proprietary wireless protocols
`
`such as that marketed by Enocean.
`
`COUNT I
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 8,908,842
`
`16.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`17.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 8,908,842
`
`entitled “Multi-Functional General Purpose Transceivers and Devices.” (“the ‘842 Patent”). The
`
`‘842 Patent was duly and legally issued on December 9, 2014. A true and correct copy of the
`
`‘842 Patent is attached as Exhibit 1.
`
`18.
`
`Defendants have directly infringed and continue to infringe at least claim 16 of
`
`the Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware and software systems in combination with one or more of Parker (which
`
`guides drivers to available parking spaces), ParkerMap (a free service for city merchants that
`
`enables them to provide real-time parking information to their patrons, and which can be
`
`Original Complaint for Patent Infringement
`- 4 -
`
`

`

`
`
`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 5 of 16 PageID #: 5Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 6 of 17 PageID #: 420
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`embedded on a merchant’s website and automatically updates with the latest parking information
`
`to ease shoppers’ planning process), ParkEdge (a self-publishing tool that enables public and
`
`private off-street parking to publish their parking garage and lot locations, space inventory, rates,
`
`hours, and availability in real-time), Enforcement (a mobile application that enables the City and
`
`its enforcement team to improve compliance and achieve optimal turnover), ParkSight
`
`Analytics™ (a Software-as-a-Service (SaaS) which provides parking data that can be accessed
`
`24/7 with a secure login credential via the web) and/or ParkingData (which provides access to
`
`data for parking locations and availability through two complementary APIs), within the scope of
`
`the claims.
`
`19.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`COUNT II
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 8,625,496
`
`20.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`21.
`
`Plaintiff IP CO is the owner by assignment of United States Patent No. 8,625,496
`
`entitled “Wireless Network System and Method for Providing Same.” (“the ‘496 Patent”). The
`
`‘496 Patent was duly and legally issued on January 7, 2014. A true and correct copy of the ‘496
`
`Patent is attached as Exhibit 2.
`
`22.
`
`Defendants have directly infringed and continue to infringe at least claim 27 of
`
`the Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`Original Complaint for Patent Infringement
`- 5 -
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`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 6 of 16 PageID #: 6Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 7 of 17 PageID #: 421
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`monitoring hardware within the scope of the claims.
`
`23.
`
`Defendants have directly infringed and continue to infringe at least claim 37 of
`
`the Patent (literally and/or under the doctrine of equivalents) by practicing the method of
`
`providing wireless network communication through the implementation and use of Streetline
`
`smart parking monitoring hardware within the scope of the claims.
`
`24.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`COUNT III
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 8,233,471
`
`25.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`26.
`
`Plaintiff IP CO is the owner by assignment of United States Patent No. 8,233,471
`
`entitled “Wireless Network System and Method for Providing Same.” (“the ‘471 Patent”). The
`
`‘471 Patent was duly and legally issued on July 31, 2012. A true and correct copy of the ‘471
`
`Patent is attached as Exhibit 3.
`
`27.
`
`Defendants have directly infringed and continue to infringe at least claims 17 and
`
`28 of the Patent (literally and/or under the doctrine of equivalents) by making, having had made,
`
`using, offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware within the scope of the claims.
`
`28.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`Original Complaint for Patent Infringement
`- 6 -
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`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 7 of 16 PageID #: 7Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 8 of 17 PageID #: 422
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`COUNT IV
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 8,223,010
`
`29.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`30.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 8,223,010
`
`entitled “Systems And Methods For Monitoring Vehicle Parking” (“the ‘010 Patent”). The ‘010
`
`Patent was duly and legally issued on July 17, 2012. A true and correct copy of the ‘010 Patent
`
`is attached as Exhibit 4.
`
`31.
`
`Defendants have directly infringed and continue to infringe at least claim 1 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware and software systems in combination with one or more of Parker (which
`
`guides drivers to available parking spaces), ParkerMap (a free service for city merchants that
`
`enables them to provide real-time parking information to their patrons, and which can be
`
`embedded on a merchant’s website and automatically updates with the latest parking information
`
`to ease shoppers’ planning process), ParkEdge (a self-publishing tool that enables public and
`
`private off-street parking to publish their parking garage and lot locations, space inventory, rates,
`
`hours, and availability in real-time), Enforcement (a mobile application that enables the City and
`
`its enforcement team to improve compliance and achieve optimal turnover), ParkSight
`
`Analytics™ (a Software-as-a-Service (SaaS) which provides parking data that can be accessed
`
`24/7 with a secure login credential via the web) and/or ParkingData (which provides access to
`
`data for parking locations and availability through two complementary APIs), within the scope of
`
`the claims.
`
`Original Complaint for Patent Infringement
`- 7 -
`
`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 8 of 16 PageID #: 8Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 9 of 17 PageID #: 423
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`32.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`COUNT V
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 7,697,492
`
`33.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`34.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 7,697,492
`
`entitled “Systems And Methods For Monitoring And Controlling Remote Devices” (“the ‘492
`
`Patent”). The ‘492 Patent was duly and legally issued on April 13, 2010. A true and correct
`
`copy of the ‘492 Patent is attached as Exhibit 5.
`
`35.
`
`Defendants have directly infringed and continue to infringe at least claims 8, 10
`
`and 13 of the Patent (literally and/or under the doctrine of equivalents) by practicing the method
`
`of communicating command and sensed data between remote wireless devices through the
`
`implementation and use of Streetline smart parking monitoring hardware within the scope of the
`
`claims.
`
`36.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`COUNT VI
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 7,468,661
`
`37.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`Original Complaint for Patent Infringement
`- 8 -
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`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 9 of 16 PageID #: 9Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 10 of 17 PageID #: 424
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`38.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 7,468,661
`
`entitled “Systems And Methods For Monitoring And Controlling Remote Devices” (“the ‘661
`
`Patent”). The ‘661 Patent was duly and legally issued on December 23, 2008. A true and
`
`correct copy of the ‘661 Patent is attached as Exhibit 6.
`
`39.
`
`Defendants have directly infringed and continue to infringe at least claim 5 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware and software systems in combination with one or more of Parker (which
`
`guides drivers to available parking spaces), ParkerMap (a free service for city merchants that
`
`enables them to provide real-time parking information to their patrons, and which can be
`
`embedded on a merchant’s website and automatically updates with the latest parking information
`
`to ease shoppers’ planning process), ParkEdge (a self-publishing tool that enables public and
`
`private off-street parking to publish their parking garage and lot locations, space inventory, rates,
`
`hours, and availability in real-time), Enforcement (a mobile application that enables the City and
`
`its enforcement team to improve compliance and achieve optimal turnover), ParkSight
`
`Analytics™ (a Software-as-a-Service (SaaS) which provides parking data that can be accessed
`
`24/7 with a secure login credential via the web) and/or ParkingData (which provides access to
`
`data for parking locations and availability through two complementary APIs), within the scope of
`
`the claims.
`
`40.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`Original Complaint for Patent Infringement
`- 9 -
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`

`

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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 10 of 16 PageID #: 10Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 11 of 17 PageID #: 425
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`COUNT VII
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 7,103,511
`
`41.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`42.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 7,103,511
`
`entitled “Wireless Communication Networks For Providing Remote Monitoring Of Devices”
`
`(“the ‘511 Patent”). The ‘511 Patent was duly and legally issued on September 5, 2006, and the
`
`Patent was reexamined and a Reexamination Certificate was issued on October 25, 2011. A true
`
`and correct copy of the ‘511 Patent, together with its certificate of reexamination is attached as
`
`Exhibit 7.
`
`43.
`
`Defendants have directly infringed and continue to infringe at least claim 1 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware and software systems in combination with one or more of Parker (which
`
`guides drivers to available parking spaces), ParkerMap (a free service for city merchants that
`
`enables them to provide real-time parking information to their patrons, and which can be
`
`embedded on a merchant’s website and automatically updates with the latest parking information
`
`to ease shoppers’ planning process), ParkEdge (a self-publishing tool that enables public and
`
`private off-street parking to publish their parking garage and lot locations, space inventory, rates,
`
`hours, and availability in real-time), Enforcement (a mobile application that enables the City and
`
`its enforcement team to improve compliance and achieve optimal turnover), ParkSight
`
`Analytics™ (a Software-as-a-Service (SaaS) which provides parking data that can be accessed
`
`24/7 with a secure login credential via the web) and/or ParkingData (which provides access to
`
`Original Complaint for Patent Infringement
`- 10 -
`
`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 11 of 16 PageID #: 11Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 12 of 17 PageID #: 426
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`data for parking locations and availability through two complementary APIs), within the scope of
`
`the claims.
`
`44.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`COUNT VIII
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 6,914,893
`
`45.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`46.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 6,914,893
`
`entitled “System and Method for Monitoring and Controlling Remote Devices” (“the ‘893
`
`Patent”). The ‘893 Patent was duly and legally issued on July 5, 2005. A true and correct copy
`
`of the ‘893 Patent, together with its certificate of reexamination is attached as Exhibit 8.
`
`47.
`
`Defendants have directly infringed and continue to infringe at least claim 1 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware within the scope of the claims.
`
`48.
`
`Defendants have directly infringed and continue to infringe at least claim 37 of
`
`the Patent (literally and/or under the doctrine of equivalents) by practicing the method of
`
`communicating between geographically remote devices through the implementation and use of
`
`Streetline smart parking monitoring hardware within the scope of the claims.
`
`49.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`Original Complaint for Patent Infringement
`- 11 -
`
`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 12 of 16 PageID #: 12Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 13 of 17 PageID #: 427
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`as a result of Defendants’ wrongful acts.
`
`COUNT IX
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 6,437,692
`
`50.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`51.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 6,437,692
`
`entitled “System And Method For Monitoring And Controlling Remote Devices” (“the ‘692
`
`Patent”). The ‘692 Patent was duly and legally issued on August 20, 2002. A true and correct
`
`copy of the ‘692 Patent is attached as Exhibit 9.
`
`52.
`
`Defendants have directly infringed and continue to infringe at least claim 1 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware and software systems in combination with one or more of Parker (which
`
`guides drivers to available parking spaces), ParkerMap (a free service for city merchants that
`
`enables them to provide real-time parking information to their patrons, and which can be
`
`embedded on a merchant’s website and automatically updates with the latest parking information
`
`to ease shoppers’ planning process), ParkEdge (a self-publishing tool that enables public and
`
`private off-street parking to publish their parking garage and lot locations, space inventory, rates,
`
`hours, and availability in real-time), Enforcement (a mobile application that enables the City and
`
`its enforcement team to improve compliance and achieve optimal turnover), ParkSight
`
`Analytics™ (a Software-as-a-Service (SaaS) which provides parking data that can be accessed
`
`24/7 with a secure login credential via the web) and/or ParkingData (which provides access to
`
`data for parking locations and availability through two complementary APIs), within the scope of
`
`Original Complaint for Patent Infringement
`- 12 -
`
`

`

`
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 13 of 16 PageID #: 13Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 14 of 17 PageID #: 428
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`the claims.
`
`53.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`COUNT X
`DIRECT INFRINGEMENT OF U.S. PATENT NO. 6,249,516
`
`54.
`
`Plaintiffs hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-15 and incorporates them by reference.
`
`55.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 6,249,516
`
`entitled “Wireless Network Gateway and Method for Providing Same” (“the ‘516 Patent”). The
`
`‘516 Patent was duly and legally issued on June 19, 2001, and the Patent was reexamined and a
`
`Reexamination Certificate was issued on November 18, 2008. A true and correct copy of the
`
`‘516 Patent, together with its certificate of reexamination is attached as Exhibit 10.
`
`56.
`
`Defendants have directly infringed and continue to infringe at least claim 1 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling, or offering for use and using, the Streetline smart parking
`
`monitoring hardware within the scope of the claims.
`
`57.
`
`Defendants’ acts of infringement have caused and continue to cause damage to
`
`Plaintiffs. Plaintiffs are entitled to recover from Defendants the damages sustained by Plaintiffs
`
`as a result of Defendants’ wrongful acts.
`
`PATENT STATUS
`
`58.
`
`Plaintiffs note that the following Petitions for Inter Partes Review have been filed
`
`with the United States Patent and Trademark Office, with the following status:
`
`Original Complaint for Patent Infringement
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 14 of 16 PageID #: 14Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 15 of 17 PageID #: 429
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`a. Case IPR2015-00668 relating to Patent 6,437,692. A Petition was filed on
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`February 2, 2015. On August 11, 2015, the Patent Trial and Appeal Board ruled that
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`“The Petition fails to show there is a reasonable likelihood that Petitioner would prevail
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`with respect to at least one of the claims challenged in the Petition.”
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`b. Case IPR2015-00663 relating to Patent 7,103,511. A Petition was filed on
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`February 2, 2015. On June 23, 2015, the Patent Trial and Appeal Board ruled that
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`“Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge to
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`the patentability of claims 1–4, 6–11, 27–47, and 51–64 of the ’511 patent as
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`unpatentable under 35 U.S.C. § 103.” On August 29, 2015, the Patent Trial and Appeal
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`Board denied the Petitioner’s motion for reconsideration of the Board’s finding that the
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`claims were patentable.
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`c. Case IPR2014-00751 relating to Patent 7,468,661. A Petition was filed on May
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`14, 2014 to review claims 1–14. The Patent Trial and Appeal Board instituted trial with
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`respect to claims 1–4 and 9–13 on November 17, 2014. (Paper 15) On November 13,
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`2015, the Patent Trial and Appeal Board ruled that “claims 2–4 … are unpatentable,” but
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`“claims 1 and 9–13 … have not been shown to be unpatentable.”
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`d. Case IPR2015-00659 relating to Patent 7,697,492. A Petition was filed on
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`February 2, 2015. On August 11, 2015, the Patent Trial and Appeal Board ruled that
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`“The information presented does not show that there is a reasonable likelihood that
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`Petitioner would prevail at trial with respect to at least one claim of the ’492 patent.” On
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`December 10, 2015, the Patent Trial and Appeal Board denied the Petitioner’s motion for
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`reconsideration of the Board’s finding that the claims were patentable.
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`Original Complaint for Patent Infringement
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 15 of 16 PageID #: 15Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 16 of 17 PageID #: 430
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`e. Case IPR2015-01973 relating to Patent 8,013,732. A Petition was filed on
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`September 25, 2015. On March 28, 2016, the Patent Trial and Appeal Board agreed to
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`review claims 3, 14, 16–21, and 23–35 of the ‘732 Patent. A trial has not yet been held.
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`f. Case CBM2016-00095 relating to Patent 8,908,842. A Petition was filed on July
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`18, 2016.
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`g. Case IPR2016-01602 relating to Patent 6,249,516. A Petition was filed on
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`August 12, 2016.
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`h. Case IPR2015-01579 relating to Patent 6,914,893. A Petition was filed on July
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`13, 2015. On January 14, 2016, the Patent Trial and Appeal Board ruled that “the
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`information presented in the Petition and accompanying evidence does not establish that
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`there is a reasonable likelihood Petitioner would prevail in showing the unpatentability of
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`any one of the challenged claims, 1, 2, 10, and 37, of the ’893 patent”. On March 17,
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`2016, the Patent Trial and Appeal Board denied the Petitioner’s motion for
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`reconsideration of the Board’s finding that the claims were patentable.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff requests that this Court enter:
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`A. A judgment in favor of Plaintiff that Defendants have directly and indirectly
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`infringed Patents 8,908,842; 8,625,496; 8,233,471; 8,223,010; 7,697,492; 7,468,661;
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`7,103,511; 6,914,893; 6,437,692; and 6,249,516;
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`B. A judgment and order requiring Defendants to pay Plaintiff its damages, costs,
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`expenses, prejudgment and post-judgment interest, and post-judgment royalties for
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`Original Complaint for Patent Infringement
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`Case 1:16-cv-00830-RGA Document 1 Filed 09/19/16 Page 16 of 16 PageID #: 16Case 1:17-cv-00868-JFB-SRF Document 20-1 Filed 09/05/17 Page 17 of 17 PageID #: 431
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`Defendants’ infringement of Patents 8,908,842; 8,625,496; 8,233,471; 8,223,010;
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`7,697,492; 7,468,661; 7,103,511; 6,914,893; 6,437,692; and 6,249,516, as provided
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`under 35 U.S.C. § 284;
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`C. A judgment and order holding that Defendants’ infringement was willful, and
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`awarding treble damages and attorney fees and expenses;
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`D. Judgment that this is an exceptional case, and, thus, awarding attorney fees and
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`expenses to Plaintiff; and
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`E. Any and all other relief to which the Court may deem Plaintiff entitled.
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`DEMAND FOR JURY TRIAL
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`Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of
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`any issues so triable by right.
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`September 19, 2016
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`Respectfully submitted,
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`/s/ George Pazuniak
`George Pazuniak DE (No. 478)
`Sean T. O’Kelly (DE No. 4349)
`Daniel P. Murray (DE No. 5785)
`O’KELLY & ERNST, LLC
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 478-4230 / 778-4000
`(302) 295-2873 (facsimile)
`gp@del-iplaw.com
`sokelly@oeblegal.com
`dmurray@oeblegal.com
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`Original Complaint for Patent Infringement
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