`Case 6:16—cv—OO344—PGB—GJK Document 1 Filed 02/26/16 Page 1 of 9 Page|D 1
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
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`LIGHTING SCIENCE GROUP
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`CORPORATION,
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`Plaintiff,
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`v.
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`U.S.A. LIGHT & ELECTRIC, INC.
`
`Defendant.
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`Civil Action No. 6, ‘.lb -(:u .344 -0 pi ~l/OGJK
`.
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`JURY TRIAL DEMANDED
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`
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Lighting Science Group Corporation, through its attorneys, alleges the following:
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`PARTIES
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`1.
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`Plaintiff Lighting Science Group Corporation (“LSG”) is a corporation organized
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`and existing under the laws of Delaware, with its principal place of business at 1830 Penn Street,
`Melbourne, Florida, 32901.
`I
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`2.
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`Upon information and belief, Defendant U.S.A. Light & Electric, Inc. (“USALE”)
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`is a corporation organized and existing under the laws of New Mexico but does business
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`throughout the United States, including Florida.
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`JURISDICTION AND VENUE
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`3.
`This is a claim for patent infringement and arises under the patent laws of the United
`States, Title 35 of the United States Code. This Court has jurisdiction over the subject matter of
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`this claim under 28 U.S.C. §§ 1331 and 1338(a).
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`4.
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`This Court has personal jurisdiction over the Defendant because the Defendant is
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`transacting business within this District and has committed acts and, on information and belief,
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`will continue to commit acts within this District giving rise to this action, including offering to sell
`and selling infringing products and/or placing infringing products, directly or
`through
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`intermediaries (including distributors, retailers, and others), into the stream of commerce in such
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`a way as to reach customers in this District. Defendant has purposefully and voluntarily sold one
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`or more of its infringing products with the expectation that they will be purchased by consumers
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`in this District. These infringing products have been and continue to be purchased by consumers
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`in this District. Defendant has committed acts of patent infringement within the United States and
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`more particularly, within this District.
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`5.
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`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b).
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`COUNT I
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`(Infringement of U.S. Patent No. 8,201,968)
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`6.
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`7.
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`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
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`Plaintiff is the owner by assignment of United States Patent No. 8,201,968, entitled
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`“Low Profile Light,” which was duly and legally issued by the United States Patent and Trademark
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`Office (“USPTO”) on June 19, 2012 (the “’968 Patent”). A true and correct copy ofthe ‘968 Patent
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`is attached hereto as Exhibit A.
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`8.
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`The ‘968 Patent is valid and enforceable and Plaintiff has the full right to recover
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`for past infringement damages and the right to recover future royalties, damages and income.
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`9.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
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`all predecessors in interest and/or implied or express licensees of the ’968 Patent, if any, have
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`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ’968 Patent
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`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
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`or more claims of that patent and/or providing actual or constructive notice to Defendant.
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`10.
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`Defendant has infringed and will continue to infringe at least Claims 1-4, 6, 8, 14,
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`15, 20, and 23 of the ‘968 Patent by, among other activities, making, using, selling or offering to
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`sell in or importing into the United States its Recessed LED Downlight products. Defendant is
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`liable for direct infringement, either literally or under the doctrine of equivalents, as well as indirect
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`infringement by way of inducement and or contributory infringement of the ‘968 Patent pursuant
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`to 35 U.S.C. §271 (a), (b), (c), (f), and or (g).
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`11.
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`Upon information and belief, Defendant has been and is continuing to induce
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`infringement of the ‘968 Patent under 35 U.S.C. §27l(b) and contributes to infringement of the
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`‘968 Patent under 35 U.S.C. §27l(c), in conjunction with such act of making, using, offering for .
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`sale, and or importing into the United States, without authority, products that fall within the scope
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`of one or more claims of the ‘968 Patent. Such infringement occurs directly by the distributors,
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`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
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`products have no substantial non-infringing uses.
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`12.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ‘968 Patent.
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`13.
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`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
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`damages adequate to compensate it for such infringement.
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`14.
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`Upon information and belief, Defendant’s acts of infringement are willful,
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`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
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`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
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`15.
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`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
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`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
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`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
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`within the scope of the claims of the ‘968 Patent.
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`COUNT II
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`(Infringement of U.S. Patent No. 8,672,518)
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`16.
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`17.
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`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
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`Plaintiff LSG is the owner by assignment of United States Patent No. 8,672,518
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`entitled “Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued
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`by the USPTO on March 3, 2015 (the “ ‘5 1 8 Patent”). A true and correct copy of the ‘518 Patent
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`is attached hereto as Exhibit B.
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`18.
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`The ‘518 Patent is valid and enforceable and Plaintiff has the full right to recover
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`for past infringement damages and the right to recover future royalties, damages and income.
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`19.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
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`all predecessors in interest and/or implied or express licensees of the ’518 Patent, if any, have
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`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ’5 18 Patent
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`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
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`or more claims of that patent and/or providing actual or constructive notice to Defendant.
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`20.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1, 3-5, 7, 8, 9, and 11 of the ‘S18 Patent by, among other activities, making, using,
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`selling or offering to sell in or importing into the United States its Recessed LED Downlight
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`products. ‘Defendant is liable for direct infringement, either literally or under the doctrine of
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`equivalents, as well as
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`indirect
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`infringement by way of inducement and or contributory
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`infringement of the ‘51 8 Patent pursuant to 35 U.S.C. §27l (a), (b), (c), (f), and or (g).
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`21.
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`Upon information and belief, Defendant has been and is continuing to induce
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`infringement of the ‘518 under 35 U.S.C. §27l(b) and contributes to infringement of the ‘S18
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`Patent under 35 U.S.C. §27l(c), in conjunction with such act of making, using, offering for sale,
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`and or importing into the United States, without authority, products that fall within the scope of
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`one or more claims of the ‘518 Patent. Such infringement occurs directly by the distributors,
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`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
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`products have no substantial non—infringing uses.
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`22.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ‘S18 Patent.
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`23.
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`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
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`damages adequate to compensate it for such infringement.
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`24.
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`Upon information and belief, Defendant’s acts of infringement are willful,
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`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
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`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
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`25.
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`Defendant's infringing activities have injured and will continue to injure Plaintiff,
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`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
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`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
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`within the scope of the claims of the ‘S18 Patent.
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`COUNT III
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`(Infringement of U.S. Patent No. 8,967,844)
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`26.
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`27.
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`Plaintiff repeats and re-alleges Paragraphs 1-5 as thoughnfully set forth herein.
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`Plaintiff LSG is the owner by assignment of United States Patent No. 8,967,844
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`entitled “Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued
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`by the USPTO on March 3, 2015 (the “ ‘844 Patent”). A true and correct copy of the ‘844 Patent
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`is attached hereto as Exhibit C.
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`28.
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`The ‘844 Patent is valid and enforceable and Plaintiff has the full right to recover
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`for past infringement damages and the right to recover future royalties, damages and income.
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`29.
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`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
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`all predecessors in interest and/or implied or express licensees of the ‘844 Patent, if any, have
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`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘844 Patent
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`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
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`or more claims of that patent and/or providing actual or constructive notice to Defendant.
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`30.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1-3, 5, 7-9, 12, 14, 16, 17, 19, and 21-24 of the ‘844 Patent by, among other
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`activities, making, using, selling or offering to sell in or importing into the United States its
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`Recessed LED Downlight products. Defendant is liable for direct infringement, either literally or
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`under the doctrine of equivalents, as well as indirect infringement by way of inducement and or
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`contributory infringement of the ‘844 Patent pursuant to 35 U.S.C. §271 (a), (b), (c), (f), and or
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`(g)-
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`31.
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`Upon information and belief, Defendant has been and is continuing to induce
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`infringement of the ‘844 under 35 U.S.C. §27l(b) and contributes to infringement of the ‘844
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`Patent under 35 U.S.C. §271(c), in conjunction with such act of making, using, offering for sale,
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`and or importing into the United States, without authority, products that fall within the scope of
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`one or more claims of the ‘844 Patent. Such infringement occurs directly by the distributors,
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`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
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`products have no substantial non-infringing uses.
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`32.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ‘844 Patent.
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`33.
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`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
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`damages adequate to compensate it for such infringement.
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`34.
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`Upon information and belief, Defendant’s acts of infringement are willful,
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`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
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`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
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`35.
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`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
`
`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
`
`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
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`within the scope of the claims of the ‘844 Patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully asks this Court to enterjudgment against Defendant
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`and against its respective subsidiaries, successors, parents, affiliates, offices, directors, agents,
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`servants, and employees, and all persons in privity or active concert or participation with
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`Defendant, granting the following relief:
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`A.
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`the entry ofjudgment in favor of Plaintiff and against Defendant for the
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`infringement of the ‘968 Patent, the ‘5 18 Patent and the ‘844 Patent;
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`B. a preliminary injunction prohibiting further infringement of each of the ‘968
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`Patent, the ‘5 1 8 Patent, and the ‘844 Patent by Defendant, their agents,
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`employees, representatives, successors and assigns and those acting in privity or
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`in concert with them;
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`C. a permanent injunction prohibiting further infringement of each of the ‘968
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`Patent, the ‘5 1 8 Patent, and the ‘844 Patent by Defendant, their agents,
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`employees, representatives, successors and assigns and those acting in privity or
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`in concert with them;
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`D. an award of actual damages against Defendant for damages arising from the
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`infringement of each of the ‘968 Patent, the ‘5 I 8 Patent, and the ‘844 Patent,
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`including treble damages for willful infringement, pursuant to 35 U.S.C. § 284;
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`B. an award of damages against Defendant for pre-judgment and post-judgment
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`interest on the damages awarded, including an award of prejudgment interest,
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`pursuant to 35 U.S.C. §284, from the date of each act of infringement of the ‘968
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`Patent, the ‘518 Patent, and the ‘844 Patent by Defendant to the day a damages
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`judgment is entered and a further award of post-judgment interest, pursuant to 28
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`U.S.C. §l961, continuing until suchjudgment is paid, at the maximum rate
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`allowed by law;
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`F.
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`the entry ofjudgment that this case is exceptional, and award treble damages,
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`attorney fees, and the costs of this action, pursuant to 35 U.S.C. § 285;
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`G.
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`in the event a final injunction is not granted, a compulsory ongoing royalty; and
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`H. such other relief to which Plaintiff is entitled under law, and any other and further
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`relief that this Court or ajury may deem just and proper.
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`JURY DEMAND
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`Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury on all issues so
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`.triable.
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`/s/Mark F. Warzecha
`
`Mark F. Warzecha
`Florida Bar No. 95779
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`WIDERMAN MALEK PL
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`1990 W. New Haven Ave., Ste. 201
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`Melbourne, Florida 32904
`Tel. (321) 255-2332
`Fax (321) 255-2351
`MFW@USLegalTcam.com
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