Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 1 of 17 PageID #: 633
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SIPCO, LLC,
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`ABB INC.,
`
`Civil Action No. 1:19-cv-01365-MN
`
`JURY TRIAL DEMANDED
`
`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`This is an action for Patent infringement in which Plaintiff SIPCO, LLC complains
`
`against Defendant ABB Inc., all upon information and belief, as follows:
`
`Identification of Parties, Jurisdiction and Venue
`
`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 13921 Park Center
`
`Road, Suite 380, Herndon, Virginia 20171.
`
`2.
`
`Defendant ABB Inc. (“ABB”) is a company organized under the laws of
`
`Delaware with a principal place of business at 12040 Regency Parkway, Suite 200, Cary, North
`
`Carolina 27518, and a registered office at Corporation Trust Company, Corporation Trust
`
`Center, 1209 Orange Street, Wilmington, DE 19801.
`
`3.
`
`ABB states it is a leading innovator of advanced power and automation
`
`technologies, and has been selling products, systems and services in these fields for decades.
`
`4.
`
`This action arises under the Patent laws of the United States, Title 35 of the
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 2 of 17 PageID #: 634
`
`United States Code. Thus, this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§
`
`1331 and 1338(a).
`
`5.
`
`This Court has personal jurisdiction over all Defendant by virtue of the Defendant
`
`being a corporation created and existing under the laws of the State of Delaware.
`
`6.
`
`Venue is proper in this Judicial District under 28 U.S.C. §§ 1391(c) and 1400(b)
`
`at least because ABB is incorporated in this District and resides in this District.
`
`Parties
`
`7.
`
`SIPCO is a small research, development and technology companies now based in
`
`Virginia. T. David Petite is a founding member of the company.
`
`8.
`
`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.
`
`9.
`
`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.
`
`10.
`
`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.
`
`- 2 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 3 of 17 PageID #: 635
`
`11.
`
`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
`
`technology systems throughout the United States.
`
`12.
`
`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
`
`100 companies 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.
`
`13.
`
`Plaintiff Sipco had previously sued ABB on certain Patents. Sipco and ABB,
`
`thereafter, on November 25, 2014, signed two licensing agreements, by which Plaintiff licensed
`
`its Patent portfolio to ABB for use with certain specified and defined products, which are
`
`expressly excluded from this action, in return for a royalty.
`
`14.
`
`After the two licensing agreements were executed, however, ABB has not paid
`
`any royalties for any of the products here in issue and has not requested any amendment of the
`
`two licenses to include the products accused of infringement in this action.
`
`15.
`
`Plaintiff wrote to ABB on February 23, 2018, commenting that certain ABB
`
`products required were within the scope of the Plaintiff’ Patent claims, but were not included
`
`with the licenses, and that the parties should amend the licenses with ABB paying a royalty
`
`- 3 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 4 of 17 PageID #: 636
`
`thereon. On March 13, 2019, Plaintiff sent Defendant a letter with charts demonstrating that
`
`Defendant was infringing at least Patent Nos. 8,964,708 and 9,430,936.
`
`16.
`
`ABB has ignored Plaintiff’s overtures and has neither requested an amendment to
`
`the licensing agreements, paid a royalty nor provided any justification for ABB’s course of
`
`conduct.
`
`17.
`
`On March 13, 2019, Plaintiff delivered a formal letter identifying ABB’s
`
`infringing products, and included detailed claim charts demonstrating ABB’s infringement.
`
`ABB ignored this letter as well.
`
`18.
`
`As a consequence of ABB’s misconduct in refusing to address the ongoing
`
`infringement issues, Plaintiff were forced to file the present action.
`
`19.
`
`The Accused Instrumentalities are the ABB WirelessHART Systems:
`
`- 4 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 5 of 17 PageID #: 637
`
`
`
`and the components thereof, including the following:
`
`
`
`i. WirelessHART temperature sensors/transmitters TTF300-W; TSP300-W;
`
`TSP311-W; TSP321-W; TSP331-W; TSP341-W, with or without an integrated
`
`Energy Harvester (See, e.g., https://new.abb.com/products/measurement-
`
`products/temperature/process-industry-head-thermometers/tsp300-w-wirelesshart-
`
`temperature-sensor);
`
`ii. WirelessHART pressure sensors/transmitters266DSH; 266DRH; 266HSH;
`
`266HRH; 266NSH; 266NRH (See, e.g.,
`
`https://new.abb.com/products/measurement-products/wireless-products-and-
`
`- 5 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 6 of 17 PageID #: 638
`
`solutions/wireless-instruments-networks-and-integration-
`
`solutions/wirelesshartpressuretransmitter);
`
`iii. Vibration and temperature sensor WiMon100 (See, e.g.,
`
`https://new.abb.com/products/measurement-products/device-management-
`
`fieldbus-and-wireless/wimon-vibration-sensor) [a specific model,
`
`3BNP100582R1, was licensed under the November 25, 2014 Patent License
`
`Agreement, but no royalties have been paid by ABB] ;
`
`iv. Gateways associated with two or more of the above components, including
`
`AWIN GW100 WirelessHART Gateway; and
`
`v. Other supporting components associated with systems that include two or more
`
`of the components identified in i-iii above, such as DHH805-A Handheld
`
`Communicator.
`
`20.
`
`The above products are hereafter referred to as the Accused Instrumentalities.
`
`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 6,914,893
`
`21.
`
`Plaintiff hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-20 and incorporates them by reference.
`
`22.
`
`On July 5, 2005, United States Patent No. 6,914,893 (“the ’893 Patent”), titled
`
`“System and Method for Monitoring and Controlling Remote Devices,” was duly and legally
`
`issued by the United States Patent and Trademark Office to inventor on July 5, 2005 to inventor
`
`Thomas D. Petite. The ’893 Patent is based on U.S. Patent Application No. 09/812,044, filed on
`
`March 19, 2001. A copy of the ’893 Patent is attached hereto as Exhibit A.
`
`23.
`
`Plaintiff SIPCO is the owner by assignment of the ‘893 Patent.
`
`- 6 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 7 of 17 PageID #: 639
`
`24.
`
`On July 13, 2015, Emerson Electric Co. (“Emerson”) instituted an Inter Partes
`
`Review proceeding, in which the Petitioner alleged the unpatentability of claims 1, 2, 10, and 37
`
`of the ‘893 Patent, IPR2015-01579. On January 14, 2016, the Patent Trial And Appeal Board of
`
`the United States Patent and Trademark Office denied the petition on grounds of lack of
`
`evidence of unpatentability.
`
`25.
`
`On November 14, 2016, Emerson instituted an Inter Partes Review proceeding, in
`
`which the Petitioner alleged the unpatentability of claims 1-3, 10, 17, 18 and 37 of the ‘893
`
`Patent, IPR2017-00260. On May 26, 2017, the Patent Trial And Appeal Board of the United
`
`States Patent and Trademark Office denied the petition on grounds that “Petitioner has not
`
`established that there is a reasonable likelihood Petitioner would prevail in showing the
`
`unpatentability of any one of the challenged claims, 1–3, 10, 17, 18, and 37, of the ’893 patent.”
`
`26.
`
`On August 3, 2018, Sipco filed a complaint with the United States International
`
`Trade Commission (“ITC”) against Respondents Analog Devices, Inc., Linear Technology LLC,
`
`Emerson Electric Co., Emerson Process Management LLLP, Emerson Process Management Asia
`
`Pacific Private Ltd., Emerson Process Management Manufacturing (M) Sdn. Bhd., Fisher-
`
`Rosemount Systems, Inc., Rosemount Inc., and Rosemount Inc. (collectively, "Respondents").
`
`On September 5, 2018, the ITC instituted Investigation Number 337-1131, titled “Certain
`
`Wireless Mesh Networking Products and Related Components Thereof,” Inv. No. 337-TA-1131.
`
`(“ITC Action”). The ITC Action involved originally U.S. Patent No. 6,914,893; 7,103,511;
`
`8,964,708; and 9,439,126. Subsequently, Patents 7,103,511; and 9,439,126 were withdrawn, and
`
`the ITC Action was terminated as to those two Patents.
`
`27.
`
`In the ITC Action, in a Markman Order dated August 13, 2019 (“ITC Markman
`
`Order”), the ITC held that dependent claim 10 of the ‘893 Patent was indefinite, because
`
`- 7 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 8 of 17 PageID #: 640
`
`“[w]hile the claim describes two of the conditions—the "second condition" and "third
`
`condition"—it is silent as to the remaining condition—the first condition.” No other claim of
`
`the ‘893 Patent was determined to be indefinite or otherwise invalid. The dependent claim held
`
`indefinite is not being pursued here.
`
`28.
`
`Defendant ABB has directly infringed and continues to infringe at least
`
`independent claims 1 and 19, and dependent claims 2-4, and 21-25 of the Patent (literally and/or
`
`under the doctrine of equivalents) by making, having had made, using, offering for sale and/or
`
`selling the Accused Instrumentalities. The correspondence between claim 1 of the ‘893 Patent
`
`and representative ABB accused systems is shown in Exhibit B.
`
`29.
`
`Defendant has been aware of the ‘893 Patent and its application to ABB’s
`
`products since at least November 25, 2014, when Defendant had taken two separate licenses
`
`under the Patent with respect to products related to the Accused Instrumentalities. Defendant’s
`
`acts of infringement have been willful.
`
`30.
`
`Defendant’s acts of infringement have caused and continue to cause damage to
`
`Plaintiff. Plaintiff are entitled to recover from Defendant the damages sustained by Plaintiff as a
`
`result of Defendant’s wrongful acts.
`
`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 8,964,708
`
`31.
`
`Plaintiff hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-20 and incorporates them by reference.
`
`32.
`
`On February 24, 2015, United States Patent No. 8,964,708 (“the ’708 Patent”),
`
`titled “Systems and Methods for monitoring and Controlling Remote Devices,” was duly and
`
`legally issued by the United States Patent and Trademark Office on February 24, 2015 to
`
`- 8 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 9 of 17 PageID #: 641
`
`inventor Thomas D. Petite. The ’708 Patent is based on U.S. Patent Application No. 12/758,590,
`
`filed on April 12, 2010. A copy of the ’708 Patent is attached hereto as Exhibit C.
`
`33.
`
`The ’708 Patent is a continuation of U.S. Patent No. 7,697,492, which is a
`
`continuation of the ’893 Patent. The ’893 and the ’511 Patents both claim continuation-in-part
`
`priority to U.S. Patent Application No. 09/412,895, issued as U.S. Patent No. 6,218,953.
`
`34.
`
`35.
`
`Plaintiff Sipco is the owner by assignment of the Patent.
`
`On January 18, 2019, Emerson Electric Co. began two Inter Partes Review
`
`proceedings, in which the Petitioner alleged the unpatentability of the claims of the ‘708 Patent,
`
`IPR2019-00545 and 547. On August 30, 2019, the Patent Trial And Appeal Board of the United
`
`States Patent and Trademark Office instituted a trial in both IPRs.
`
`36.
`
`The ‘708 Patent is currently being prosecuted in the ITC Action. In the ITC
`
`Markman Order, the ITC held that dependent claim 5 of the “708 Patent was indefinite because
`
`“claim 1 is too far removed from claim 5 to permit a POSITA to determine with reasonable
`
`certainty which ‘preformatted message’ is the antecedent.” No other claim of the ‘708 Patent
`
`was determined to be indefinite or otherwise invalid. The dependent claim held indefinite is not
`
`being pursued here.
`
`37.
`
`Defendant has been aware of the ‘708 Patent and its application to ABB’s
`
`products since at least about the day the Patent issued, because Defendant had taken two separate
`
`licenses under the pending U.S. Patent Application that issued as the ‘708 Patent with respect to
`
`products related to the Accused Instrumentalities. Further, Plaintiff specifically brought the ‘708
`
`Patent and Defendant’s acts of infringement to Defendant’s attention by verbal and written
`
`communications beginning on January 17, 2019, and, on March 13, 2019, delivered to ABB a
`
`claim chart demonstrating Defendant’s infringement of the Patent. Defendant never responded
`
`- 9 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 10 of 17 PageID #: 642
`
`substantively to Plaintiff’s notice of infringement. Defendant’s acts of infringement have been
`
`willful.
`
`38.
`
`Defendant ABB has directly infringed and continue to infringe at least
`
`independent claims 1 and 16, and dependent claims 2, 8, 9, 10, 17, 18, 19 and 20 of the Patent
`
`(literally and/or under the doctrine of equivalents) by making, having had made, using, offering
`
`for sale and selling the Accused Instrumentalities. The correspondence between claim 1 of the
`
`‘708 Patent and representative ABB accused wireless communication devices is shown in
`
`Exhibit D.
`
`39.
`
`Defendant’s acts of infringement have caused and continue to cause damage to
`
`Plaintiff. Plaintiff are entitled to recover from Defendant the damages sustained by Plaintiff as a
`
`result of Defendant’s wrongful acts.
`
`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 9,430,936
`
`40.
`
`Plaintiff hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-20 and incorporates them by reference.
`
`41.
`
`Plaintiff SIPCO is the owner by assignment of United States Patent No. 9,430,936
`
`entitled “Systems And Methods For Monitoring And Controlling Remote Devices” (“the ‘936
`
`Patent”). The ‘936 Patent was duly and legally issued on August 30, 2016. A true and correct
`
`copy of the ‘936 Patent is attached as Exhibit E.
`
`42.
`
`Defendant ABB has directly infringed and continue to infringe claims 1-7 of the
`
`Patent (literally and/or under the doctrine of equivalents) by making, having had made, using,
`
`offering for sale and selling the Accused Instrumentalities. The correspondence between claim 6
`
`of the ‘936 Patent and representative ABB accused wireless communication devices is shown in
`
`- 10 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 11 of 17 PageID #: 643
`
`Exhibit F.
`
`43.
`
`Plaintiff specifically brought the ‘936 Patent and Defendant’s acts of infringement
`
`to Defendant’s attention by verbal and written communications beginning on January 17, 2019,
`
`and, on March 13, 2019, delivered to ABB a claim chart demonstrating Defendant’s
`
`infringement of the Patent. Defendant never responded substantively to Plaintiff’s notice of
`
`infringement. Defendant’s acts of infringement have been willful.
`
`44.
`
`Defendant’s acts of infringement have caused and continue to cause damage to
`
`Plaintiff. Plaintiff are entitled to recover from Defendant the damages sustained by Plaintiff as a
`
`result of Defendant’s wrongful acts.
`
`COUNT IV
`INFRINGEMENT OF U.S. PATENT NO. 9,439,126
`
`45.
`
`Plaintiff hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-20 and incorporates them by reference.
`
`46.
`
`On September 6, 2016, United States Patent No. 9,439,126 (“the ’126 Patent”),
`
`titled “Wireless Network Protocol System and Methods,” was duly and legally issued by the
`
`United States Patent and Trademark Office to the inventor. The ’126 Patent claims priority to
`
`International Application No. PCT/US2006/002342, filed on January 25, 2006 and U.S.
`
`Provisional Application No. 60/646,689 and has the same common inventor — Mr. Petite — as
`
`the ’893, ’511, and ’708 Patents. A copy of the ’126 Patent is attached as Exhibit G.
`
`47.
`
`48.
`
`Plaintiff SIPCO is the owner by assignment of the ‘126 Patent.
`
`On January 18, 2019, Emerson Electric Co. filed two petitions for Inter Partes
`
`Review, in which the Petitioner alleged the unpatentability of the claims of the ‘126 Patent,
`
`IPR2019-00548 and 549. However, on September 5, 2019, the Patent Trial And Appeal Board
`
`- 11 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 12 of 17 PageID #: 644
`
`of the United States Patent and Trademark Office refused to institute a trial with respect to either
`
`petition because “information presented does not show a reasonable likelihood that Petitioner
`
`would prevail in showing that at least one of the challenged claims of the ’126 patent is
`
`unpatentable on the grounds asserted in the Petition.”
`
`49.
`
`Defendant ABB has directly infringed and continue to infringe at least
`
`independent claims 1, 7 and 12, and dependent claims 2-5 and 8-11 of the Patent (literally and/or
`
`under the doctrine of equivalents) by making, having had made, using, offering for sale and
`
`selling the Accused Instrumentalities. The correspondence between claim 1 of the ‘126 Patent
`
`and representative ABB accused wireless communication networks is shown in Exhibit H.
`
`50.
`
`Defendant’s acts of infringement have caused and continue to cause damage to
`
`Plaintiff. Plaintiff are entitled to recover from Defendant the damages sustained by Plaintiff as a
`
`result of Defendant’s wrongful acts.
`
`COUNT V
`INFRINGEMENT OF U.S. PATENT NO. 7,103,511
`
`51.
`
`Plaintiff hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-20 and incorporates them by reference.
`
`52.
`
`On September 5, 2006, United States Patent No. 7,103,511 (“the ’511 Patent”),
`
`titled “Wireless Communication Networks for Providing Remote Monitoring of Devices,” was
`
`duly and legally issued by the United States Patent and Trademark Office on September 5, 2006
`
`to inventor Thomas D. Petite. The ’511 Patent is based on U.S. Patent Application No.
`
`09/925,269, filed on August 9, 2001. An ex parte reexamination certificate, US 7,103,511 C1,
`
`issued for the ’511 Patent on October 25, 2011. A copy of the ’511 Patent , together with its
`
`certificate of reexamination, is attached hereto as Exhibit I.
`
`- 12 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 13 of 17 PageID #: 645
`
`53.
`
`54.
`
`Plaintiff is the owner by assignment of the Patent.
`
`On February 2, 2015, FieldComm Group instituted an Inter Partes Review
`
`proceeding, in which the Petitioner alleged the unpatentability of claims 1–4, 6–11, 27–47, and
`
`51–64 of Patent 7,103,511, as amended by the above ex parte reexamination certificate,
`
`IPR2015-00663. The Patent Trial And Appeal Board of the United States Patent and Trademark
`
`Office, however, denied the petition on grounds of lack of evidence of unpatentability.
`
`55.
`
`In the ITC Action, the ITC Markman Order determined that the term “wide area
`
`network (WAN),” which is an element of all the ‘511 claims, was indefinite. The ITC had no
`
`jurisdiction to issue the determination as to the ‘511 Patent, because the ‘511 Patent was
`
`withdrawn and the ITC had already terminated investigation as to the ‘511 Patent, when the ITC
`
`Markman Order was issued. Further, even if the ITC Markman Order was properly entered, the
`
`ITC Markman Order as to this term is legally erroneous and will be challenged in future
`
`proceedings. Further, the determination as to this term is inconsistent with prior judicial
`
`construction of the term by the federal courts. See SIPCO, LLC v. Amazon.com, Inc., 2012 WL
`
`5195942, at *16 (E.D. Tex. 2012) (“construes the term ‘wide area network’ to have its plain and
`
`ordinary meaning,” which “does not include a local area network”); see also SIPCO, LLC V.
`
`ABB, Inc., 2012 WL 3112302 (E.D. Tex. 2012), adopted 2012 WL 12842877 (E.D. Tex. 2012).
`
`56.
`
`Defendant ABB has directly infringed and continues to infringe at least
`
`independent claims 1, 8 and 44, and dependent claims 2, 3, 4, 33, 34, 35, 45, 46, 47, 56, 57, and
`
`58 of the Patent (literally and/or under the doctrine of equivalents) by making, having had made,
`
`using, offering for sale and/or selling the Accused Instrumentalities. The correspondence
`
`between claim 1 of the ‘511 Patent and representative ABB accused wireless communication
`
`networks is shown in Exhibit J.
`
`- 13 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 14 of 17 PageID #: 646
`
`57.
`
`Defendant has been aware of the ‘511 Patent and its application to ABB’s
`
`products since at least November 25, 2014, when Defendant had taken two separate licenses
`
`under the Patent with respect to products related to the Accused Instrumentalities. Defendant’s
`
`acts of infringement have been willful.
`
`58.
`
`Defendant’s acts of infringement have caused and continue to cause damage to
`
`Plaintiff. Plaintiff are entitled to recover from Defendant the damages sustained by Plaintiff as a
`
`result of Defendant’s wrongful acts.
`
`COUNT VI
`INFRINGEMENT OF U.S. PATENT NO. 7,978,059
`
`59.
`
`Plaintiff hereby restates and re-alleges the allegations set forth in the preceding
`
`paragraphs 1-20 and incorporates them by reference.
`
`60.
`
`On September 5, 2006, United States Patent No. 7,978,059 (“the ’059 Patent”),
`
`titled “System And Method For Monitoring And Controlling Remote Devices,” was duly and
`
`legally issued by the United States Patent and Trademark Office on July 12, 2011 to inventors
`
`Thomas D. Petite and Richard M. Huff. A Certificate of Correction was issued on August 14,
`
`2018. A copy of the ’059 Patent is attached hereto as Exhibit K.
`
`61.
`
`62.
`
`Plaintiff is the owner by assignment of the Patent.
`
`The ‘059 claims include a reference to a wide area network, which term is also
`
`found in the ‘511 Patent. The term is not indefinite for the same reasons as set forth above.
`
`63.
`
`Defendant ABB has directly infringed and continues to infringe at least
`
`independent claim 7 (literally and/or under the doctrine of equivalents) by making, having
`
`implemented the Accused Instrumentalities to practice the method of claim 7. The
`
`correspondence between claim 7 and Defendant’s practice of the method of the ‘059 Patent is
`
`- 14 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 15 of 17 PageID #: 647
`
`shown in Exhibit L.
`
`64.
`
`Defendant has had knowledge of the ‘059 Patent since at least November 25,
`
`2014, when Defendant took a royalty-bearing license under the ‘059 Patent.
`
`65. With knowledge of the ‘059 Patent, Defendant has induced its customers to
`
`acquire and use the Accused Instrumentalities solution in this country, including the practicing of
`
`the method of Claim 7. Defendant has actively, knowingly, and intentionally induced
`
`infringement of the ‘059 Patent, literally or by the doctrine of equivalence, by selling Accused
`
`Instrumentalities to their customers for use in end-user systems in a manner that infringes Claim
`
`7 of the ‘059 Patent.
`
`66.
`
`There is no substantial use for the Accused Instrumentalities that does not infringe
`
`Claim 7 of the ‘059 Patent. Defendant actively, knowingly, and intentionally has been and
`
`continues materially contribute to infringement of Claim 7 of the ‘059 Patent, literally or by the
`
`doctrine of equivalence, by selling the Accused Instrumentalities to its customers for use in end-
`
`user locations in a manner that infringes one or more claims of the ‘059 Patent.
`
`67.
`
`Defendant has been aware of the ‘059 Patent and its application to ABB’s
`
`products since at least November 25, 2014, when Defendant had taken two separate licenses
`
`under the Patent with respect to products related to the Accused Instrumentalities. Defendant’s
`
`acts of infringement have been willful.
`
`68.
`
`Defendant’s acts of infringement have caused and continue to cause damage to
`
`Plaintiff. Plaintiff are entitled to recover from Defendant the damages sustained by Plaintiff as a
`
`result of Defendant’s wrongful acts.
`
`- 15 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 16 of 17 PageID #: 648
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff requests that this Court enter:
`
`A. A judgment in favor of Plaintiff that Defendant have directly and indirectly infringed
`
`Patents 6,914,893; 8,964,708; 9,430,936; 9,439,126; 7,103,511; and 7,978,059;
`
`B. A judgment and order requiring Defendant to pay Plaintiff its damages, costs,
`
`expenses, prejudgment and post-judgment interest, and post-judgment royalties for
`
`Defendant’s infringement of Patents 6,914,893; 8,964,708; 9,430,936; 9,439,126;
`
`7,103,511; and 7,978,059, as provided under 35 U.S.C. § 284;
`
`C. A judgment and order holding that Defendant’s infringement was willful, and
`
`awarding treble damages and attorney fees and expenses;
`
`D. Judgment that this is an exceptional case, and, thus, awarding attorney fees and
`
`expenses to Plaintiff; and
`
`E. Any and all other relief to which the Court may deem Plaintiff entitled.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of
`
`any issues so triable by right.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`- 16 -
`
`

`

`Case 1:19-cv-01365-MN Document 9 Filed 09/25/19 Page 17 of 17 PageID #: 649
`
`September 17, 2019
`
`
`
`
`
`/s/ George Pazuniak
`George Pazuniak DE (No. 478)
`Sean T. O’Kelly (DE No. 4349)
`O’KELLY ERNST & JOYCE, 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
`
`Attorneys for Plaintiff
`
`- 17 -
`
`