Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 1 of 7
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`CIVIL ACTION
`
`CASE NO.
`
`SECT.
`
`*
`
`**
`
`
`
`
`*
`*
`*
`*
`MAGISTRATE
` *
`*
`*
`JURY TRIAL DEMANDED
`**********************************************************************
`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR PATENT
`INFRINGEMENT AND DEMAND FOR TRIAL BY JURY
`
`JAM STRAIT, INC.
`
`vs.
`
`
`OSRAM SYLVANIA, INC.
`
`NOW INTO COURT, through undersigned counsel, comes Plaintiff, Jam Strait,
`
`Inc., (hereinafter “Plaintiff” or “Jam Strait”), which respectfully avers that:
`
`Parties
`
`1.
`
`Plaintiff, Jam Strait, Inc., is a Mississippi corporation with its principal place of
`
`business in Newton, Mississippi.
`
`1
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`CIVIL ACTION
`
`CASE NO.
`
`SECT.
`
`*
`
`**
`
`
`
`
`*
`*
`*
`*
`MAGISTRATE
` *
`*
`*
`JURY TRIAL DEMANDED
`**********************************************************************
`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR PATENT
`INFRINGEMENT AND DEMAND FOR TRIAL BY JURY
`
`JAM STRAIT, INC.
`
`vs.
`
`
`OSRAM SYLVANIA, INC.
`
`NOW INTO COURT, through undersigned counsel, comes Plaintiff, Jam Strait,
`
`Inc., (hereinafter “Plaintiff” or “Jam Strait”), which respectfully avers that:
`
`Parties
`
`1.
`
`Plaintiff, Jam Strait, Inc., is a Mississippi corporation with its principal place of
`
`business in Newton, Mississippi.
`
`1
`
`
`
`Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 2 of 7
`
`2.
`
`Defendant, Osram Sylvania, Inc. (hereinafter “Defendant”) is a corporation
`
`organized under the laws of Delaware with its principal place of business in Danvers,
`
`Massachusetts.
`
`3.
`
`Defendant is and has been doing business, and has committed acts and caused
`
`damages, in this judicial district at all times relevant hereto.
`
`Jurisdiction and Venue
`
`4.
`
`This is an action for patent infringement under the Patent Laws of the United
`
`States, 35 U.S.C. §1 et seq. Furthermore, the amount in controversy exceeds $75,000
`
`exclusive of interest and costs. Accordingly, subject matter jurisdiction herein is based
`
`upon 28 U.S.C. §§1331, 1332 and 1338.
`
`5.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §1391(b) and (c) and
`
`1400(b) because Defendant is doing business and “resides” in this judicial district as
`
`defined by 28 U.S.C. §1391(c), a substantial part of the events or omissions giving rise to
`
`this claim occurred in this district and Defendant has committed acts of patent
`
`infringement in this district.
`
`2
`
`
`
`Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 3 of 7
`
`Facts
`
`6.
`
`Plaintiff produces and sells a variety of light-emitting-diode (LED) lamps, lights,
`
`bulbs and similar products.
`
`7.
`
`On August 27, 2013, the U.S. Patent and Trademark Office issued to Bruce
`
`Wesson, inventor, U.S. patent No. 8,517,583 (the ‘583 patent) for “Loaded LED Bulbs
`
`for Incandescent/Fluorescent/Neon/Xenon/Halogen Bulbs Replacement in Load Sensitive
`
`Applications and More.” Exhibit A.
`
`8.
`
`At all times since the issuance of the ‘583 patent, Plaintiff, Jam Strait, has been the
`
`assignee and owner of the ‘583 patent.
`
`9.
`
`Since the issuance of the ‘583 patent, Jam Strait has fulfilled the marking
`
`requirements under 35 U.S.C. §287(a), thereby giving notice to the public that the
`
`invention is protected by the ‘583 patent.
`
`10.
`
`Jam Strait has the manufacturing capability to meet the needs of the market for the
`
`invention claimed in the ‘583 patent.
`
`3
`
`
`
`Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 4 of 7
`
`11.
`
`In spite of the valid and enforceable patent, Defendant produces and distributes a
`
`“168/194/2825" LED light (“the Sylvania LED”) that infringes at least claims 27, 28, 31
`
`and 37, and possibly other claims, of the ‘583 patent. Exhibits B-D.
`
`Claim for Relief-Infringement of U.S. Patent No. 8,517,583
`
`The allegations of paragraphs 1-11 are repeated and are incorporated herein by
`
`12.
`
`reference.
`
`13.
`
`By manufacturing and selling the Sylvania LED, Defendant has infringed and
`
`continues to infringe the ‘583 patent by importing, making, selling, offering for sale
`
`and/or using the invention claimed in the ‘583 patent, and by causing the invention to be
`
`made, used, offered for sale, and/or sold by others and each other, and will continue to do
`
`so unless enjoined by the Court.
`
`14.
`
`Defendant has directly infringed, contributorily infringed and actively induced
`
`others to infringe the ‘583 patent.
`
`15.
`
`Upon information and belief, Defendant had actual knowledge of the ‘583 patent
`
`since its date of issue, but in spite of such knowledge, Defendant has continued and
`
`4
`
`
`
`Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 5 of 7
`
`threatens to continue its infringement of the ‘583 patent in defiant disregard of Plaintiff’s
`
`rights under the patent, and Defendant has made, and is currently making profits from
`
`such infringement that rightfully belong to Plaintiff.
`
`16.
`
`Defendant’s infringement of the ‘583 patent is wilful and wanton and in complete
`
`disregard of Plaintiff’s rights, warranting an increased award of treble damages pursuant
`
`to 35 U.S.C. §284.
`
`17.
`
`Unless this Court enjoins Defendant from further infringement of the ‘583 patent,
`
`Plaintiff will be irreparably harmed and will incur further damages.
`
`18.
`
`Plaintiff currently has no means of accurately determining the extent of
`
`Defendant’s infringement of the ‘583 patent, or the amount of its damages resulting
`
`therefrom, except through the production of evidence that is now in Defendant’s
`
`possession and control.
`
`19.
`
`Pursuant to 35 U.S.C. §283, Plaintiff is entitled to preliminary and permanent
`
`injunctions enjoining Defendant from continuing to directly or contributorily infringe,
`
`and/or from actively inducing others to infringe the ‘583 patent.
`
`5
`
`
`
`Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 6 of 7
`
`20.
`
`Pursuant to 35 U.S.C. §284, Plaintiff is entitled to a judgment in its favor and
`
`against Defendant awarding all damages that Plaintiff has sustained due to Defendant’s
`
`infringement of the ‘583 patent, including increased damages in the amount of three times
`
`Plaintiff’s actual damages, together with prejudgment and post-judgment interest, costs
`
`and expenses.
`
`21.
`
`This is an exceptional case under 35 U.S.C. §285, entitling Plaintiff to reasonable
`
`attorneys’ fees.
`
`22.
`
`Plaintiff hereby demands a trial by jury according to Fed. Rule Civ. Pro. 38.
`
`WHEREFORE, Plaintiff, Jam Strait, Inc., respectfully prays for judgment in its
`
`favor and against Defendant, Osram Sylvania, Inc., as follows: 1) Preliminarily and
`
`permanently enjoining Osram Sylvania from directly and contributorily infringing and/or
`
`inducing others to infringe the ‘583 patent; 2) awarding Jam Strait all damages that it has
`
`sustained due to Osram Sylvania’s infringement of the ‘583 patent, including increased
`
`damages of three times the damages sustained, together with prejudgment and post-
`
`judgment interest, costs and expenses; 3) awarding Jam Strait attorneys’ fees and any
`
`6
`
`
`
`Case 2:14-cv-01107 Document 1 Filed 05/15/14 Page 7 of 7
`
`further relief as the Court deems just or equitable under the circumstances.
`
`RESPECTFULLY SUBMITTED,
`
`/kenneth l. tolar/
`KENNETH L. TOLAR (La. Bar No. 22641) (T.A.)
`Attorney at Law
`2908 Hessmer Avenue
`Metairie, Louisiana 70002
`Telephone: (504) 780-9891
`Facsimile: (504) 780-7741
`Email:tolar@cavtel.net
`
`- and -
`
`Vanessa D'Souza (La. Bar No. 31708)
`GARVEY, SMITH, NEHRBASS & NORTH, L.L.C.,
`3838 N. Causeway Blvd.
`Suite 3290
`Metairie, LA 70002-1767
`Tel.: (504) 835-2000
`Fax: (504) 835-2070
`Email:VanessaDSouza@gsnn.us
`
`ATTORNEYS FOR JAM STRAIT, INC.
`
`7
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 1 of 11
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`CIVIL ACTION
`
`CASE NO.
`
`SECT.
`
`MAGISTRATE
`
`*
`*
`
`**
`
`**
`
`JAM STRAIT, INC.
`
`vs.
`
`
`PILOT AUTOMOTIVE, INC. AND
`WANG’S INTERNATIONAL, INC.
`
`*
`*
`*
`*
`JURY TRIAL DEMANDED
`*
`**********************************************************************
`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR PATENT
`INFRINGEMENT, AND DEMAND FOR TRIAL BY JURY
`
`NOW INTO COURT, through undersigned counsel, comes Plaintiff, Jam Strait,
`
`Inc., (hereinafter “Plaintiff” or “Jam Strait”), which respectfully avers that:
`
`Parties
`
`1.
`
`Plaintiff, Jam Strait, Inc. (“Jam Strait”) is a Mississippi corporation with its
`
`principal place of business in Newton, Mississippi.
`
`2.
`
`Defendant, Pilot Automotive, Inc. (hereinafter “Pilot” or “Defendant”), on
`
`Page -1-
`
`OSIX 1004.001
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 2 of 11
`
`information and belief, is a corporation organized under the laws of California with its
`
`principal place of business in City of Industry, California.
`
`3.
`
`Defendant, Wang’s International, Inc. (hereinafter “Wang’s” or “Defendant”), on
`
`information and belief, is a corporation organized under the laws of California with its
`
`principal place of business in City of Industry, California.
`
`4.
`
`This is an action for patent infringement under the Patent Laws of the United
`
`States, 35 U.S.C. §1 et seq. Furthermore, the amount in controversy exceeds $75,000,
`
`exclusive of interest and costs. Accordingly, subject matter jurisdiction herein is based
`
`upon 28 U.S.C. §§1331, 1332 and 1338.
`
`5.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §1391(b) and (c) and
`
`1400(b) because Defendants are doing business and “reside” in this judicial district as
`
`defined by 28 U.S.C. §1391(c), a substantial part of the events or omissions giving rise to
`
`this claim occurred in this district and Defendants have committed acts of patent
`
`infringement in this district.
`
`Facts
`
`6.
`
`Plaintiff, Jam Strait, produces and sells a variety of light-emitting-diode (LED)
`
`Page -2-
`
`OSIX 1004.002
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 3 of 11
`
`lamps, lights, bulbs and similar products.
`
`7.
`
`On April 16, 2002, the U.S. Patent and Trademark Office issued to Bruce Wesson,
`
`inventor, U.S. Patent No. 6,371,636 (“the ‘636 Patent”) for an “LED Light Module for
`
`Vehicles.” Exhibit A.
`
`8.
`
`At all times since the issuance of the ‘636 patent, Plaintiff, Jam Strait, has been the
`
`assignee and owner of the ‘636 patent.
`
`9.
`
`On September 7, 2004, the U.S. Patent and Trademark Office issued to Bruce
`
`Wesson, inventor, U.S. Patent No. 6,786,625 (“the ‘625 patent”) for an “LED Light
`
`Module for Vehicles.” Exhibit B.
`
`10.
`
`At all times since the issuance of the ‘625 patent, Plaintiff, Jam Strait, has been the
`
`assignee and owner of the ‘625 patent.
`
`11.
`
`On August 27, 2013, the U.S. Patent and Trademark Office issued to Bruce
`
`Wesson, inventor, U.S. Patent No. 8,517,583 (“the ‘583 patent”) for “Loaded LED Bulbs
`
`for Incandescent/Fluorescent/Neon/Xenon/Halogen Bulbs Replacement in Load Sensitive
`
`Applications and More.” Exhibit C.
`
`Page -3-
`
`OSIX 1004.003
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 4 of 11
`
`At all times since the issuance of the ‘583 patent, Plaintiff, Jam Strait, has been the
`
`12.
`
`assignee and owner of the ‘583 patent.
`
`13.
`
`Since the issuance of the ‘636, ‘625 and ‘583 patents, Jam Strait has fulfilled the
`
`marking requirements of 35 U.S.C. §287(a), thereby giving notice to the public that its
`
`inventions are protected by the aforementioned patents.
`
`14.
`
`Jam Strait has the manufacturing capability to meet the needs of the market for the
`
`products covered by the aforementioned patents.
`
`15.
`
`Pilot has previously infringed the ‘636 patent, which was the subject of case no.
`
`2007-8353, filed in the United District Court for the Eastern District of Louisiana (“the
`
`previous lawsuit”).
`
`16.
`
`Pursuant to a settlement agreement in the previous lawsuit, Pilot and Jam Strait
`
`executed a licensing agreement (“the licensing agreement”) wherein Pilot was authorized
`
`to sell only specifically-enumerated products to a limited list of authorized entities.
`
`Exhibits D1 and D2.
`
`Page -4-
`
`OSIX 1004.004
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 5 of 11
`
`The authorized entities set forth in the licensing agreement did not include Auto
`
`17.
`
`Zone, Inc.(“Auto Zone”).
`
`18.
`
`The licensing agreement between Plaintiff and Pilot mandated that any other
`
`infringing products which were not specifically enumerated must be licensed by a
`
`separate agreement.
`
`19.
`
`By letter dated May 15, 2013, Jam Strait notified Pilot that Jam Strait had reason to
`
`believe that Pilot was planning to sell or offer for sale automotive LED’s to Auto Zone,
`
`Inc. that infringe Jam Strait’s patents. Exhibit E.
`
`20.
`
`Jam Strait further advised Pilot that the sale or offer for sale to Auto Zone of any
`
`products covered by the Jam Strait patents would constitute both a breach of the licensing
`
`agreement and patent infringement.
`
`21.
`
`Jam Strait also warned Pilot that, the sale or offer for sale to any entity whatsoever
`
`of any products covered by the Jam Strait patents which were not listed in the licensing
`
`agreement, would constitute both a breach of the licensing agreement and patent
`
`infringement.
`
`Page -5-
`
`OSIX 1004.005
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 6 of 11
`
`22.
`
`In spite of the licensing agreement, and the subsequent warning and demand that
`
`Pilot refrain from any such infringement, Pilot, and upon information and belief, Wang’s,
`
`have offered for sale and sold products that infringe certain claims of the ‘625 and ‘583
`
`patents, threaten to continue their infringement of the patents in flagrant disregard of Jam
`
`Strait’s patent rights, and have made, are making and are threatening to make profits from
`
`the infringement that rightfully belong to Jam Strait.
`
`23.
`
`In spite of the valid and enforceable patents, Defendants produce and distribute a
`
`part number “IL-194R-5" that infringes at least claim 30 of the ‘625 patent, and at least
`
`claims 27 and 30, and possibly other claims, of the ‘583 patent.
`
`24.
`
`In spite of the valid and enforceable patents, Defendants produce and distribute a
`
`part number “IL-1156W-15" that infringes at least claims 27 and 30, and possibly other
`
`claims, of the ‘583 patent.
`
`25.
`
`In spite of the valid and enforceable patents, Defendants produce and distribute a
`
`part number “IL-1157R-15" that infringes at least claims 1-4, and possibly other claims,
`
`of the ‘583 patent.
`
`Page -6-
`
`OSIX 1004.006
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 7 of 11
`
`26.
`
`In spite of the valid and enforceable patents, Defendants produce and distribute a
`
`part number “IL-3157W-15" that infringes at least claims 5, 27, 28, 30, 32, 34, and 37,
`
`and possibly other claims, of the ‘583 patent.
`
`27.
`
`In spite of the valid and enforceable patents, Defendants produce and distribute a
`
`part number “IL-7440W-15" that infringes at least claims 27 and 30, and possibly other
`
`claims, of the ‘583 patent.
`
`28.
`
`In spite of the valid and enforceable patents, Defendants produce and distribute a
`
`part number “IL-7443W-15" that infringes at least claims 5, 27, 28, 30, 32, and 34, and
`
`possibly other claims, of the ‘583 patent.
`
`Claim for Relief One-Infringement of U.S. Patent Nos. 6,786,625 and 8,517,583
`
`The allegations of paragraphs 1-28 are repeated and are incorporated herein by
`
`29.
`
`reference.
`
`30.
`
`Since the issuance of the ‘625 and ‘583 patents, Defendants have infringed and
`
`continue to infringe the ‘625 and ‘583 patents by importing, making, selling, offering for
`
`sale, and/or using products that infringe Jam Strait’s patents, and by causing the
`
`Page -7-
`
`OSIX 1004.007
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 8 of 11
`
`infringing products to be made, used, offered for sale, and/or sold by others, and will
`
`continue to do so unless enjoined by this Court.
`
`31.
`
`Defendants have directly infringed, contributorily infringed, and actively induced
`
`others to infringe the ‘625 and ‘583 patents.
`
`32.
`
`On information and belief, Defendants had actual knowledge of the ‘625 and ‘583
`
`patents since approximately their date of issue, but notwithstanding such actual
`
`knowledge, Defendants have continued, and threaten to continue, their infringement of
`
`the ‘625 and ‘583 patents in flagrant disregard of Jam Strait’s rights under the patent, and
`
`Defendants have made, are making and are threatening to make profits from the
`
`infringement that rightfully belong to Jam Strait.
`
`33.
`
`Defendants’ infringement of the ‘625 and ‘583 patents is wilful, wanton and in
`
`total disregard of Jam Strait’s rights, warranting an increased award of treble damages
`
`pursuant to 35 U.S.C. §284.
`
`34.
`
`Jam Strait has been deprived of substantial gains and profits and has suffered
`
`substantial damages as a result of Defendants’ infringement of the ‘625 and ‘583 patents
`
`and by the threat of their continued infringement.
`
`Page -8-
`
`OSIX 1004.008
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 9 of 11
`
`35.
`
`Unless this Court enjoins Defendants from continuing to infringe the ‘625 and
`
`‘583 patents and from threatening to continue to infringe the ‘625 and ‘583 patents, Jam
`
`Strait will be irreparably harmed and will suffer further damages.
`
`36.
`
`Jam Strait presently has no means of ascertaining the full extent of Defendants’
`
`infringement of the ‘625 and ‘583 patents, or of the amount of its damages resulting from
`
`such infringement, except through the production of evidence now in Defendants’
`
`possession and control, and all such evidence is material to Jam Strait’s claims against
`
`Defendants.
`
`37.
`
`Pursuant to 35 U.S.C. §283, Jam Strait is entitled to preliminary and permanent
`
`injunctions in its favor enjoining Defendants from continuing to directly and
`
`contributorily infringe the ‘625 and ‘583 patents and from continuing to actively induce
`
`others to infringe the ‘625 and ‘583 patents in order to avoid irreparable harm.
`
`38.
`
`Pursuant to 35 U.S.C. §284, Jam Strait is entitled to a judgment in its favor and
`
`against Defendants awarding all damages Jam Strait has sustained as a consequence of
`
`Defendants’ infringement of the ‘625 and ‘583 patents, including increased damages in
`
`the amount of three times the damages sustained by Jam Strait, together with prejudgment
`
`Page -9-
`
`OSIX 1004.009
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 10 of 11
`
`and post-judgment interest, costs, and expenses.
`
`39.
`
`This is an exceptional case warranting the award of reasonable attorney fees and
`
`expenses in favor of Jam Strait and against Defendants pursuant to 35 U.S.C. §285.
`
`Claim for Relief-Breach of Contract
`
`40.
`
`The allegations of paragraphs 1-28 are repeated and are incorporated herein by
`
`reference.
`
`41.
`
`Defendants’ actions described herein constitute a breach of contract, entitling Jam
`
`Strait to any unpaid royalties as well as costs and attorneys fees as set forth in the
`
`licensing agreement.
`
`42.
`
`Plaintiff hereby demands a trial by jury according to Fed. Rule Civ. Pro. 38.
`
`WHEREFORE, Jam Strait respectfully prays for judgment in its favor and against
`
`Defendants as follows:
`
`(a)
`
`Preliminarily and permanently enjoining Defendants from directly and
`
`contributorily infringing the ‘625 and ‘583 patents and from actively inducing others to
`
`infringe the ‘625 and ‘583 patents;
`
`(b)
`
`Awarding Jam Strait all damages it has sustained as a consequence of
`
`Page -10-
`
`OSIX 1004.010
`
`
`
`Case 2:13-cv-06752-KDE-SS Document 1 Filed 12/20/13 Page 11 of 11
`
`Defendants’ infringement of the ‘625 and ‘583 patents, including increased damages in
`
`the amount of three times the damages sustained, together with prejudgment and post-
`
`judgment interest, costs, and expenses;
`
`(c)
`
`Awarding reasonable attorney fees incurred by Jam Strait in connection
`
`with this matter; and
`
`(d)
`
`Awarding such other and further relief as the Court deems just and
`
`equitable in the premises and all such relief to which Jam Strait is entitled.
`
`RESPECTFULLY SUBMITTED,
`
`/kenneth l. tolar/
`Kenneth L. Tolar (Bar No. 22641) (T.A.)
`Attorney at Law
`2908 Hessmer Avenue
`Metairie, Louisiana 70002
`Telephone: (504) 780-9891
`Facsimile: (504) 780-7741
`Email:tolar@cavtel.net
`
`ATTORNEY FOR JAM STRAIT, INC.
`
`Page -11-
`
`OSIX 1004.011
`
`
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