Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 1 of 9 PageID 1
`Case 6:16—cv—OO344—PGB—GJK Document 1 Filed 02/26/16 Page 1 of 9 Page|D 1
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`LIGHTING SCIENCE GROUP
`
`CORPORATION,
`
`Plaintiff,
`
`v.
`
`U.S.A. LIGHT & ELECTRIC, INC.
`
`Defendant.
`
`Civil Action No. 6, ‘.lb -(:u .344 -0 pi ~l/OGJK
`.
`
`JURY TRIAL DEMANDED
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Lighting Science Group Corporation, through its attorneys, alleges the following:
`
`PARTIES
`
`1.
`
`Plaintiff Lighting Science Group Corporation (“LSG”) is a corporation organized
`
`and existing under the laws of Delaware, with its principal place of business at 1830 Penn Street,
`Melbourne, Florida, 32901.
`I
`
`2.
`
`Upon information and belief, Defendant U.S.A. Light & Electric, Inc. (“USALE”)
`
`is a corporation organized and existing under the laws of New Mexico but does business
`
`throughout the United States, including Florida.
`
`JURISDICTION AND VENUE
`
`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
`
`this claim under 28 U.S.C. §§ 1331 and 1338(a).
`
`4.
`
`This Court has personal jurisdiction over the Defendant because the Defendant is
`
`Page 1 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 2 of 9 PageID 2
`Case 6:16—cv—00344—PGB—GJK Document 1 Filed 02/26/16 Page 2 of 9 Page|D 2
`
`transacting business within this District and has committed acts and, on information and belief,
`
`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
`
`intermediaries (including distributors, retailers, and others), into the stream of commerce in such
`
`a way as to reach customers in this District. Defendant has purposefully and voluntarily sold one
`
`or more of its infringing products with the expectation that they will be purchased by consumers
`
`in this District. These infringing products have been and continue to be purchased by consumers
`
`in this District. Defendant has committed acts of patent infringement within the United States and
`
`more particularly, within this District.
`
`5.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b).
`
`COUNT I
`
`(Infringement of U.S. Patent No. 8,201,968)
`
`6.
`
`7.
`
`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
`
`Plaintiff is the owner by assignment of United States Patent No. 8,201,968, entitled
`
`“Low Profile Light,” which was duly and legally issued by the United States Patent and Trademark
`
`Office (“USPTO”) on June 19, 2012 (the “’968 Patent”). A true and correct copy ofthe ‘968 Patent
`
`is attached hereto as Exhibit A.
`
`8.
`
`The ‘968 Patent is valid and enforceable and Plaintiff has the full right to recover
`
`for past infringement damages and the right to recover future royalties, damages and income.
`
`9.
`
`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
`
`all predecessors in interest and/or implied or express licensees of the ’968 Patent, if any, have
`
`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ’968 Patent
`
`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
`
`Page 2 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 3 of 9 PageID 3
`Case 6:16—cv—00344—PGB—GJK Document 1 Filed 02/26/16 Page 3 of 9 Page|D 3
`
`or more claims of that patent and/or providing actual or constructive notice to Defendant.
`
`10.
`
`Defendant has infringed and will continue to infringe at least Claims 1-4, 6, 8, 14,
`
`15, 20, and 23 of the ‘968 Patent by, among other activities, making, using, selling or offering to
`
`sell in or importing into the United States its Recessed LED Downlight products. Defendant is
`
`liable for direct infringement, either literally or under the doctrine of equivalents, as well as indirect
`
`infringement by way of inducement and or contributory infringement of the ‘968 Patent pursuant
`
`to 35 U.S.C. §271 (a), (b), (c), (f), and or (g).
`
`11.
`
`Upon information and belief, Defendant has been and is continuing to induce
`
`infringement of the ‘968 Patent under 35 U.S.C. §27l(b) and contributes to infringement of the
`
`‘968 Patent under 35 U.S.C. §27l(c), in conjunction with such act of making, using, offering for .
`
`sale, and or importing into the United States, without authority, products that fall within the scope
`
`of one or more claims of the ‘968 Patent. Such infringement occurs directly by the distributors,
`
`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
`
`products have no substantial non-infringing uses.
`
`12.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ‘968 Patent.
`
`13.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`14.
`
`Upon information and belief, Defendant’s acts of infringement are willful,
`
`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
`
`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
`
`15.
`
`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,
`
`Page 3 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 4 of 9 PageID 4
`Case 6:16—cv—00344—PGB—GJK Document 1 Filed 02/26/16 Page 4 of 9 Page|D 4
`
`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
`
`within the scope of the claims of the ‘968 Patent.
`
`COUNT II
`
`(Infringement of U.S. Patent No. 8,672,518)
`
`16.
`
`17.
`
`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
`
`Plaintiff LSG is the owner by assignment of United States Patent No. 8,672,518
`
`entitled “Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued
`
`by the USPTO on March 3, 2015 (the “ ‘5 1 8 Patent”). A true and correct copy of the ‘518 Patent
`
`is attached hereto as Exhibit B.
`
`18.
`
`The ‘518 Patent is valid and enforceable and Plaintiff has the full right to recover
`
`for past infringement damages and the right to recover future royalties, damages and income.
`
`19.
`
`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
`
`all predecessors in interest and/or implied or express licensees of the ’518 Patent, if any, have
`
`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ’5 18 Patent
`
`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
`
`or more claims of that patent and/or providing actual or constructive notice to Defendant.
`
`20.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1, 3-5, 7, 8, 9, and 11 of the ‘S18 Patent by, among other activities, making, using,
`
`selling or offering to sell in or importing into the United States its Recessed LED Downlight
`
`products. ‘Defendant is liable for direct infringement, either literally or under the doctrine of
`
`equivalents, as well as
`
`indirect
`
`infringement by way of inducement and or contributory
`
`infringement of the ‘51 8 Patent pursuant to 35 U.S.C. §27l (a), (b), (c), (f), and or (g).
`
`21.
`
`Upon information and belief, Defendant has been and is continuing to induce
`
`Page 4 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 5 of 9 PageID 5
`Case 6:16—cv—OO344—PGB—GJK Document 1 Filed 02/26/16 Page 5 of 9 Page|D 5
`
`infringement of the ‘518 under 35 U.S.C. §27l(b) and contributes to infringement of the ‘S18
`
`Patent under 35 U.S.C. §27l(c), in conjunction with such act of making, using, offering for sale,
`
`and or importing into the United States, without authority, products that fall within the scope of
`
`one or more claims of the ‘518 Patent. Such infringement occurs directly by the distributors,
`
`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
`
`products have no substantial non—infringing uses.
`
`22.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ‘S18 Patent.
`
`23.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`24.
`
`Upon information and belief, Defendant’s acts of infringement are willful,
`
`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
`
`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
`
`25.
`
`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
`
`within the scope of the claims of the ‘S18 Patent.
`
`COUNT III
`
`(Infringement of U.S. Patent No. 8,967,844)
`
`26.
`
`27.
`
`Plaintiff repeats and re-alleges Paragraphs 1-5 as thoughnfully set forth herein.
`
`Plaintiff LSG is the owner by assignment of United States Patent No. 8,967,844
`
`entitled “Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued
`
`by the USPTO on March 3, 2015 (the “ ‘844 Patent”). A true and correct copy of the ‘844 Patent
`
`Page 5 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 6 of 9 PageID 6
`Case 6:16—cv—OO344—PGB—GJK Document 1 Filed 02/26/16 Page 6 of 9 Page|D 6
`
`is attached hereto as Exhibit C.
`
`28.
`
`The ‘844 Patent is valid and enforceable and Plaintiff has the full right to recover
`
`for past infringement damages and the right to recover future royalties, damages and income.
`
`29.
`
`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
`
`all predecessors in interest and/or implied or express licensees of the ‘844 Patent, if any, have
`
`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘844 Patent
`
`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
`
`or more claims of that patent and/or providing actual or constructive notice to Defendant.
`
`30.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1-3, 5, 7-9, 12, 14, 16, 17, 19, and 21-24 of the ‘844 Patent by, among other
`
`activities, making, using, selling or offering to sell in or importing into the United States its
`
`Recessed LED Downlight products. Defendant is liable for direct infringement, either literally or
`
`under the doctrine of equivalents, as well as indirect infringement by way of inducement and or
`
`contributory infringement of the ‘844 Patent pursuant to 35 U.S.C. §271 (a), (b), (c), (f), and or
`
`(g)-
`
`31.
`
`Upon information and belief, Defendant has been and is continuing to induce
`
`infringement of the ‘844 under 35 U.S.C. §27l(b) and contributes to infringement of the ‘844
`
`Patent under 35 U.S.C. §271(c), in conjunction with such act of making, using, offering for sale,
`
`and or importing into the United States, without authority, products that fall within the scope of
`
`one or more claims of the ‘844 Patent. Such infringement occurs directly by the distributors,
`
`retailers, resellers, customers, users and or licensees of the infringing products. The infringing
`
`products have no substantial non-infringing uses.
`
`32.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`Page 6 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 7 of 9 PageID 7
`Case 6:16—cv—OO344—PGB—GJK Document 1 Filed 02/26/16 Page 7 of 9 Page|D 7
`
`the ‘844 Patent.
`
`33.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`34.
`
`Upon information and belief, Defendant’s acts of infringement are willful,
`
`warranting the assessment of increased damages pursuant to 35 U.S.C. § 284, and warrant a finding
`
`that this is an exceptional case, pursuant to 35 U.S.C. § 285.
`
`35.
`
`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
`
`within the scope of the claims of the ‘844 Patent.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully asks this Court to enterjudgment against Defendant
`
`and against its respective subsidiaries, successors, parents, affiliates, offices, directors, agents,
`
`servants, and employees, and all persons in privity or active concert or participation with
`
`Defendant, granting the following relief:
`
`A.
`
`the entry ofjudgment in favor of Plaintiff and against Defendant for the
`
`infringement of the ‘968 Patent, the ‘5 18 Patent and the ‘844 Patent;
`
`B. a preliminary injunction prohibiting further infringement of each of the ‘968
`
`Patent, the ‘5 1 8 Patent, and the ‘844 Patent by Defendant, their agents,
`
`employees, representatives, successors and assigns and those acting in privity or
`
`in concert with them;
`
`C. a permanent injunction prohibiting further infringement of each of the ‘968
`
`Page 7 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 8 of 9 PageID 8
`Case 6:16—cv—OO344—PGB—GJK Document 1 Filed 02/26/16 Page 8 of 9 PagelD 8
`
`Patent, the ‘5 1 8 Patent, and the ‘844 Patent by Defendant, their agents,
`
`employees, representatives, successors and assigns and those acting in privity or
`
`in concert with them;
`
`D. an award of actual damages against Defendant for damages arising from the
`
`infringement of each of the ‘968 Patent, the ‘5 I 8 Patent, and the ‘844 Patent,
`
`including treble damages for willful infringement, pursuant to 35 U.S.C. § 284;
`
`B. an award of damages against Defendant for pre-judgment and post-judgment
`
`interest on the damages awarded, including an award of prejudgment interest,
`
`pursuant to 35 U.S.C. §284, from the date of each act of infringement of the ‘968
`
`Patent, the ‘518 Patent, and the ‘844 Patent by Defendant to the day a damages
`
`judgment is entered and a further award of post-judgment interest, pursuant to 28
`
`U.S.C. §l961, continuing until suchjudgment is paid, at the maximum rate
`
`allowed by law;
`
`F.
`
`the entry ofjudgment that this case is exceptional, and award treble damages,
`
`attorney fees, and the costs of this action, pursuant to 35 U.S.C. § 285;
`
`G.
`
`in the event a final injunction is not granted, a compulsory ongoing royalty; and
`
`H. such other relief to which Plaintiff is entitled under law, and any other and further
`
`relief that this Court or ajury may deem just and proper.
`
`Page 8 of 9
`
`

`
`Case 6:16-cv-00344-PGB-GJK Document 1 Filed 02/26/16 Page 9 of 9 PageID 9
`Case 6:16—cv—00344—PGB—GJK Document 1 Filed 02/26/16 Page 9 of 9 Page|D 9
`
`JURY DEMAND
`
`Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury on all issues so
`
`.triable.
`
`
`/s/Mark F. Warzecha
`
`Mark F. Warzecha
`Florida Bar No. 95779
`
`WIDERMAN MALEK PL
`
`1990 W. New Haven Ave., Ste. 201
`
`Melbourne, Florida 32904
`Tel. (321) 255-2332
`Fax (321) 255-2351
`MFW@USLegalTcam.com
`
`Page 9 of 9