`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`
`
`
`
`Civil Action No. 6:16-cv-00680-Orl-37GJK
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`LIGHTING SCIENCE GROUP
`CORPORATION,
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`
`v.
`
`ENERGY EFFICIENT LIGHTING
`COMPANY LIMITED,
`
`
`Defendant.
`______________________________/
`
`
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Lighting Science Group Corporation, through its attorneys, alleges the following:
`
`
`
`PARTIES
`
`1.
`
`Plaintiff Lighting Science Group Corporation (“LSG” and/or “Plaintiff”) is a
`
`corporation organized and existing under the laws of Delaware, with its principal place of business
`
`at 811 N. Atlantic Avenue, Cocoa Beach, Florida, 32931.
`
`2.
`
`Upon information and belief, Defendant Energy Efficient Lighting Company
`
`Limited (“EEL” and/or “Defendant”) is a corporation organized and existing under the laws of
`
`Ontario, Canada with its principal place of business located at 331 Amber Street, Suite B,
`
`Markham, Ontario, L3R 3J7 Canada, 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
`
`
`
`Page 1 of 8
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 2 of 8 PageID 206
`
`
`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
`
`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 LSG 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 USPTO on June 19, 2012
`
`(the “’968 Patent”). A true and correct copy of the ’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
`
`
`
`Page 2 of 8
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 3 of 8 PageID 207
`
`
`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.
`
`10.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1, 2, 14, 15, 19, 20, 22 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 RD-LED900-12-3000K
`
`product. Defendant is liable for direct infringement, either literally or under the doctrine of
`
`equivalents of the ’968 Patent pursuant to 35 U.S.C. §271 (a).
`
`11.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1, 2, 11, 20, 22, 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 UTLED-S and UTLED-6-S
`
`products. Defendant is liable for direct infringement, either literally or under the doctrine of
`
`equivalents, of the ’968 Patent pursuant to 35 U.S.C. §271 (a).
`
`12.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1 and 2, of the ‘968 Patent by, among other activities, making, using, selling or
`
`offering to sell in or importing into the United States its UTLED-8 products. Defendant is liable
`
`for direct infringement, either literally or under the doctrine of equivalents, of the ‘968 Patent
`
`pursuant to 35 U.S.C. §271 (a).
`
`13.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ’968 Patent.
`
`14.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`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 8
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 4 of 8 PageID 208
`
`
`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 “’518 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 ’518 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, 4, 5, 6, 7, 8, 10, 11, 12 and 13 of the ‘518 Patent by, among other activities,
`
`making, using, selling or offering to sell in or importing into the United States its RD-LED900-
`
`12-3000K product. Defendant is liable for direct infringement, either literally or under the
`
`doctrine of equivalents, of the ’518 Patent pursuant to 35 U.S.C. §271 (a).
`
`21.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ’518 Patent.
`
`
`
`Page 4 of 8
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 5 of 8 PageID 209
`
`
`
`22.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`23.
`
`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 ’518 Patent.
`
`COUNT III
`(Infringement of U.S. Patent No. 8,967,844)
`
`24.
`
`25.
`
`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. 8,967,844
`
`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
`
`is attached hereto as Exhibit C.
`
`26.
`
`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.
`
`27.
`
`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.
`
`28.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`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,
`
`among other activities, making, using, selling or offering to sell in or importing into the United
`
`
`
`Page 5 of 8
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 6 of 8 PageID 210
`
`
`States its RD-LED900-12-3000K product. Defendant is liable for direct infringement, either
`
`literally or under the doctrine of equivalents, of the ’844 Patent pursuant to 35 U.S.C. §271 (a).
`
`29.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`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,
`
`among other activities, making, using, selling or offering to sell in or importing into the United
`
`States its UTLED-S and UTLED-6-S products. Defendant is liable for direct infringement, either
`
`literally or under the doctrine of equivalents, of the ’844 Patent pursuant to 35 U.S.C. §271 (a).
`
`30.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1, 2, 3, 4, 5, 9, 12, 14, 16, 22, 23, and 24 of the ‘844 Patent by, among other
`
`activities, making, using, selling or offering to sell in or importing into the United States its
`
`UTLED-8, UTLED-S9, and UTLED-S12 products. Defendant is liable for direct infringement,
`
`either literally or under the doctrine of equivalents, of the ‘844 Patent pursuant to 35 U.S.C. §271
`
`(a).
`
`31.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ’844 Patent.
`
`32.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`33.
`
`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.
`
`Page 6 of 8
`
`
`
`
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 7 of 8 PageID 211
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully asks this Court to enter judgment against Defendant
`
`and against its respective subsidiaries, successors, parents, affiliates, officers, directors, agents,
`
`servants, and employees, and all persons in privity or active concert or participation with
`
`Defendant, granting the following relief:
`
`A. the entry of judgment in favor of Plaintiff and against Defendant for the
`
`infringement of the ’518 Patent, the ‘968 Patent, and the ’844 Patent;
`
`B. a preliminary injunction prohibiting further infringement of each of the ’518 Patent,
`
`the ‘968 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 ’518 Patent,
`
`the ‘968 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 ’518 Patent, the ‘968 Patent, and the ’844 Patent,
`
`including treble damages for willful infringement, pursuant to 35 U.S.C. § 284;
`
`E. 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 ’518
`
`Patent, the ‘968 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
`
`
`
`Page 7 of 8
`
`
`
`Case 6:16-cv-00680-RBD-GJK Document 13 Filed 06/20/16 Page 8 of 8 PageID 212
`
`
`
`U.S.C. §1961, continuing until such judgment is paid, at the maximum rate allowed
`
`by law;
`
`F. in the event a final injunction is not granted, a compulsory ongoing royalty; and
`
`G. such other relief to which Plaintiff is entitled under law, and any other and further
`
`relief that this Court or a jury may deem just and proper.
`
`JURY DEMAND
`
`
`triable.
`
`Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury on all issues so
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/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
`
`Page 8 of 8