Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 1 of 8 PageID 205
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
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`Civil Action No. 6:16-cv-00680-Orl-37GJK
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`JURY TRIAL DEMANDED
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`Plaintiff,
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`v.
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`ENERGY EFFICIENT LIGHTING
`COMPANY LIMITED,
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`Defendant.
`______________________________/
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`AMENDED 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” and/or “Plaintiff”) is a
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`corporation organized and existing under the laws of Delaware, with its principal place of business
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`at 811 N. Atlantic Avenue, Cocoa Beach, Florida, 32931.
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`2.
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`Upon information and belief, Defendant Energy Efficient Lighting Company
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`Limited (“EEL” and/or “Defendant”) is a corporation organized and existing under the laws of
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`Ontario, Canada with its principal place of business located at 331 Amber Street, Suite B,
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`Markham, Ontario, L3R 3J7 Canada, but does business throughout the United States, including
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`Florida.
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`JURISDICTION AND VENUE
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`3.
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`This is a claim for patent infringement and arises under the patent laws of the United
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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 2 of 8 PageID 206
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`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
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`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
`(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 LSG is the owner by assignment of United States Patent No. 8,201,968
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`entitled “Low Profile Light,” which was duly and legally issued by the USPTO on June 19, 2012
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`(the “’968 Patent”). A true and correct copy of the ’968 Patent 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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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 3 of 8 PageID 207
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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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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1, 2, 14, 15, 19, 20, 22 and 23 of the ‘968 Patent by, among other activities, making,
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`using, selling or offering to sell in or importing into the United States its RD-LED900-12-3000K
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`product. Defendant is liable for direct infringement, either literally or under the doctrine of
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`equivalents of the ’968 Patent pursuant to 35 U.S.C. §271 (a).
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`11.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1, 2, 11, 20, 22, and 23 of the ‘968 Patent by, among other activities, making, using,
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`selling or offering to sell in or importing into the United States its UTLED-S and UTLED-6-S
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`products. Defendant is liable for direct infringement, either literally or under the doctrine of
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`equivalents, of the ’968 Patent pursuant to 35 U.S.C. §271 (a).
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`12.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1 and 2, of the ‘968 Patent by, among other activities, making, using, selling or
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`offering to sell in or importing into the United States its UTLED-8 products. Defendant is liable
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`for direct infringement, either literally or under the doctrine of equivalents, of the ‘968 Patent
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`pursuant to 35 U.S.C. §271 (a).
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`13.
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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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`14.
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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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`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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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 4 of 8 PageID 208
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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
`(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 “’518 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 ’518 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, 4, 5, 6, 7, 8, 10, 11, 12 and 13 of the ‘518 Patent by, among other activities,
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`making, using, selling or offering to sell in or importing into the United States its RD-LED900-
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`12-3000K product. Defendant is liable for direct infringement, either literally or under the
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`doctrine of equivalents, of the ’518 Patent pursuant to 35 U.S.C. §271 (a).
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`21.
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`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
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`the ’518 Patent.
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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 5 of 8 PageID 209
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`22.
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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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`23.
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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 ’518 Patent.
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`COUNT III
`(Infringement of U.S. Patent No. 8,967,844)
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`24.
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`25.
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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. 8,967,844
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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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`26.
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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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`27.
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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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`28.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1, 2, 3, 4, 5, 7, 8, 12, 14, 16, 17, 19, 20, 21, 22, 23 and 24 of the ’844 Patent by,
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`among other activities, making, using, selling or offering to sell in or importing into the United
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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 6 of 8 PageID 210
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`States its RD-LED900-12-3000K product. Defendant is liable for direct infringement, either
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`literally or under the doctrine of equivalents, of the ’844 Patent pursuant to 35 U.S.C. §271 (a).
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`29.
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`Upon information and belief, Defendant has infringed and will continue to infringe
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`at least Claims 1, 2, 3, 4, 7, 10, 11, 12, 14, 16, 14, 16, 21, 22, 23, and 24 of the ‘844 Patent by,
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`among other activities, making, using, selling or offering to sell in or importing into the United
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`States its UTLED-S and UTLED-6-S products. Defendant is liable for direct infringement, either
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`literally or under the doctrine of equivalents, of the ’844 Patent pursuant to 35 U.S.C. §271 (a).
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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, 2, 3, 4, 5, 9, 12, 14, 16, 22, 23, and 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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`UTLED-8, UTLED-S9, and UTLED-S12 products. Defendant is liable for direct infringement,
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`either literally or under the doctrine of equivalents, of the ‘844 Patent pursuant to 35 U.S.C. §271
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`(a).
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`31.
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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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`32.
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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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`33.
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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 ’844 Patent.
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`Page 6 of 8
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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 7 of 8 PageID 211
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully asks this Court to enter judgment against Defendant
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`and against its respective subsidiaries, successors, parents, affiliates, officers, 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. the entry of judgment in favor of Plaintiff and against Defendant for the
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`infringement of the ’518 Patent, the ‘968 Patent, and the ’844 Patent;
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`B. a preliminary injunction prohibiting further infringement of each of the ’518 Patent,
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`the ‘968 Patent, and the ’844 Patent by Defendant, their agents, employees,
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`representatives, successors and assigns and those acting in privity or in concert with
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`them;
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`C. a permanent injunction prohibiting further infringement of each of the ’518 Patent,
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`the ‘968 Patent, and the ’844 Patent by Defendant, their agents, employees,
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`representatives, successors and assigns and those acting in privity or in concert with
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`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 ’518 Patent, the ‘968 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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`E. 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 ’518
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`Patent, the ‘968 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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`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 8 of 8 PageID 212
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`U.S.C. §1961, continuing until such judgment is paid, at the maximum rate allowed
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`by law;
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`F. in the event a final injunction is not granted, a compulsory ongoing royalty; and
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`G. such other relief to which Plaintiff is entitled under law, and any other and further
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`relief that this Court or a jury may deem just and proper.
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`JURY DEMAND
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`triable.
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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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`/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@USLegalTeam.com
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