Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 1 of 12
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`JUDGE CAPRON!
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`UNITED STATES DI~TRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`5
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`... ..
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`YEOSHUA SORIAS and ZILICON
`ACCESSORIES, LLC,
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`Plaintiff,
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`v.
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`Case No. - - - - -
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`INDIEGOGO, INC.,
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`JURY TRIAL DEMANDED
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`Defendant.
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`Yeoshua Sorias ("Sorias") and Zilicon Accessories, LLC ("Zilicon") (collectively,
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`the "Plaintiffs"), by and through their undersigned counsel, Sam P. Israel, P.C., hereby
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`state for their complaint against defendant Indiegogo, Inc. ("Indiegogo" or "Defendant")
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`as follows:
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`NATURE OF THE CASE
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`1.
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`The Plaintiffs own and have the rights, title, and interest in and to the
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`Detachably Integrated Battery Charger For Mobile Cell Phones And Like Devices, an invention
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`registered with the United States Patent and Trademark Office as U.S. Patent No.
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`8,712,486 (the "' 486 Patent"). See Exhibit A hereto.
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`2.
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`Upon information and belief, Indiegogo maintains an international
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`crowdfunding website, which provides a platform for individuals and start-up ventures
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`to raise investment capital for a project in exchange for a percentage of the proceeds
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`received by means of this financing. One of these start-up ventures is Prong, LLC
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`("Prong"), which designs and manufactures electronic device accessories. On or about
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`February 25, 2015, Indiegogo and Prong launched a campaign to make, market, offer to
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`Prong, Inc. Exh. 1005 p. 1
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 2 of 12
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`sell and sell a cell phone charger (the “Prong Charger”) that is the same as the invention
`described in the ‘486 Patent.
`Indiegogo has infringed and continues to infringe, literally and/or under
`3.
`the doctrine of equivalents, one or more claims of the ’486 Patent under 35 U.S.C. § 271
`by making, marketing, offering to sell and selling the Prong Charger, which infringes the
`patent-in-suit, as described more particularly below.
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`THE PARTIES
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`Plaintiff Sorias is a resident of New York State, Kings County.
`4.
`Plaintiff Zilicon is a New York limited liability company, in which Sorias is
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`a principal and officer.
`Upon information and belief, Indiegogo is a corporation organized and
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`existing under the laws of Delaware, with its principal place of business in San Francisco,
`CA 94103-2921. Indiegogo is registered to do business in New York and maintains a
`business address at 54 Thompson Street, 4th Floor, New York, New York 10012.
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`JURISDICTION AND VENUE
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`This Court has personal jurisdiction over the Defendants by reason of their
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`transaction of business in this District, and their commission of acts of infringement
`within this District. According to information posted on www.Indiegogo.com, Indiegogo
`regularly solicits and conducts sales activities within New York State.
`Subject matter jurisdiction is conferred upon this Court pursuant to 28
`8.
`U.S.C. §1331 and §1338(a). Venue is proper in this Court, pursuant to 28 U.S.C. §1391 and
`§1400.
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`FACTS
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`THE ‘486 PATENT AND PRONG’S INFRINGEMENT THEREOF
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`Sorias is an inventor and patent owner of various electronic devices and
`9.
`accessories. He is the founder and chief executive officer of Zilicon—a company that
`engages in designing and manufacturing innovative wireless and electronic devices.
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`2
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`Prong, Inc. Exh. 1005 p. 2
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 3 of 12
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`Sorias invents, manufactures, and sells his creations, often in conjunction with Zilicon,
`which has an exclusive license to manufacture and distribute Sorias’ creations.
`Sorias is a named inventor and owns all rights, title and interest in and to
`10.
`the ‘486 Patent, whose underlying invention is primarily directed to a mobile phone
`charger that can be kept attached to the backside of the phone, with AC prongs folding
`in opposite directions flatly onto the back of the charger, such that the phone with its
`charger can easily fit in one’s pocket.
`The Plaintiffs have a pending patent infringement lawsuit against Prong
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`and other defendants stemming from their violations of the Plaintiffs’ rights under the
`‘486 Patent pursuant to the U.S. Patent Act, 35 U.S.C. §§ 1 et seq. See Sorias. v. National
`Cellular USA, Inc., et al. Civ. No.: 1:14-cv-02897-WFK-SMG (E.D.N.Y).
`In Sorias v. National Cellular USA, Inc., the Plaintiffs have alleged, inter alia,
`12.
`that Prong is infringing the Plaintiffs’ rights under the ‘486 Patent by making, marketing,
`offering for sale, and distributing the Prong Charger, which is based on the ‘486 Patent.
`Among other things, the Complaint in that action alleges that the Prong Charger includes
`all of the limitations of at least one claim of the ‘486 Patent.
`Throughout, Prong has been fully aware of the prosecution of the ‘486
`13.
`Patent and its eventual issuance. Prong’s principal, Jesse Pliner, has approached Sorias on
`at least one occasion offering to enter into a licensing agreement in order to enable Prong
`to lawfully make and sell the Prong Charger. But Pliner and Sorias could not reach a
`licensing agreement, and the Plaintiffs never granted Prong any rights in connection with
`the ‘486 Patent (and, accordingly, the Prong Charger). Nonetheless, Prong knowingly and
`willfully continued said infringing acts without a license or any justification at law or in
`equity.
`Prong’s website, www.prong.com, promotes the Prong charger as “the only
`14.
`case[] with integrated charging prongs” and the “first of its kind in the world.”
`15. Upon information and belief, Indiegogo has made its crowdfunding
`platform available to Prong to pool money from investors and purported to: “highlight
`activities within [Prong’s] network”; “Provid[e] a Partner Page” to “Build[] brand
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`3
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`Prong, Inc. Exh. 1005 p. 3
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 4 of 12
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`recognition and influence through strategic brand placement on sponsored campaign
`pages”; as well as “Offer[] dedicated partner support, educational tools, and a partner
`launch at partnersupport@indiegogo.com.”
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`INDIEGOGO’S MARKETING AND SALE OF THE PRONG CHARGER
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`Indiegogo has extensively marketed the Prong Charger on its website,
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`including by publicizing the following comparative chart for Prong Charger and other
`chargers:
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`17. Indiegogo further publicizes the following promises regarding the Prong Charger:
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`Prong, Inc. Exh. 1005 p. 4
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 5 of 12
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`PWR Case with a detachable backup battery and built-in plugs. Charge anywhere. No cords
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`needed. The first all-in-one charging solution that you can fit in your pocket
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`It's a protective case with a detachable backup battery that has built-in plugs. Your phone can
`remain with you, in the inner protective case, while the backup battery is recharged.
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`There are two main problems with current charging solutions on the market today: (1) they
`require that you be tethered to the power source with a cord when you recharge; and (2) unless
`you carry a wall charger and cord everywhere, you can find yourself in situations where your
`phone is dead and you have no way to charge up until you get home. The PWR Case solves
`both of these problems.
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`Upon information and belief, Prong and Indiegogo raised more than
`18.
`enough funds needed to manufacture and distribute the infringing Prong Chargers
`within the United States, meaning that Indiegogo has and continues to profit from
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`5
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`Prong, Inc. Exh. 1005 p. 5
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 6 of 12
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`Prong’s infringement.
`19. Upon information and belief, Indiegogo is further enabling Prong’s massive
`distribution of the infringing Prong Charger. According to the Indiegogo website, 15 days
`ago Prong’s CEO, Lloyd Gladstone said that, with Indiegogo’s help, Prong has “raised
`over $52,300, which is a pretty fantastic feat. … However, we're not done! We want to
`keep the ball rolling and let more people know about how they can cut the cord and take
`charge. Please help us by copying and pasting this link to share on social media:
`http://igg.me/at/prong.”
`Upon information and belief, Indiegogo has not only marketed the
`20.
`infringing Prong Charger, but it has sold and continues to sell the Prong Charger. See
`Indiegogo, Prong iPhone Case: Never Use Another Cord Again, www. indiegogo.com/
`projects/ prong-iphone-case-never-use-another-cord-again (last accessed Feb. 26, 2015).
`21. Upon information and belief, Indiegogo charges a 9% fee on contributions,
`and returns 5% if the campaign reaches its goal (thus keeping 4% of the fee as
`compensation for its agency). The Prong Charger campaign has exceeded its goal, and
`the approximately 350 funders were charged their respective amounts through the
`Indiegogo website, whereupon approximately 96% of the contribution funds were made
`available to Prong (not including the credit card or PayPal transaction fees), while 4% of
`that money was made available to Indiegogo. See Indiegogo Playbook, Pricing & Fees,
`http:// go.indiegogo.com/pricing-fees (last accessed March 15, 2015).
`Indeed, by virtue of its agency, business and sales arrangement with Prong,
`22.
`Indiegogo is selling in the United States and within the jurisdiction of the Court where
`the aforesaid lawsuit is pending, multiple units of the Prong Charger—a product that
`directly infringes the ‘486 Patent under 35 U.S.C. § 271(a), which infringement is ongoing.
`For instance, on its dedicated Prong webpage Indiegogo offers to sell the
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`Prong Charger as follows:
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`$70USD
`PWR Case iPhone 6 - Early Bird Change
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`6
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`Prong, Inc. Exh. 1005 p. 6
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 7 of 12
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`Get em' while they're hot! Early Birds will get the PWR case
`for the iPhone 6 at a heavily discounted price. The PWR Case
`will retail for $100 and the Indiegogo price goes up to $80 after
`the Early Birds run out. Includes shipping within the
`Continental United States.
`Estimated delivery: June 2015
`$600USD
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`Bulk Pack - 10 PWR Cases Change
`TEN PWR Cases for the iPhone 6 at $60 each. You will be the
`very first to get your hands on the PWR Case at a steeply
`discounted price. The PWR Case will later retail for $100 and
`up. Includes shipping within the Continental United States.
`Estimated delivery: June 2015
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`Therefore, Indiegogo has been paid (via its profit-sharing mechanism) for
`24.
`marketing the Prong Charger and it has profited from the unauthorized marketing and
`sale of the infringing product. Indeed, deliveries of the infringing charger are expected in
`June of 2015.
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`In sum, Indiegogo is a funds raiser and selling agent of Prong, and has
`25.
`continued to advertise, offer for sale, and sell multiple units of the Prong Charger within
`the United States and within the jurisdiction of this Court via its website, www.
`indiegogo.com/
`projects/
`prong-iphone-case-never-use-another-cord-again.
`Indiegogo’s direct involvement in the making, offering for sale and selling the Prong
`Charger is confirmed on Prong’s own website, www.prong.com, which contains a link
`with Indiegogo’s trademark and invites users to “pre-order iPhone 6 … [Prong Charger]
`case on Indiegogo.”
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`INDIEGOGO’S REFUSAL TO CEASE ITS INFRINGING ACTIVITIES
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`Indiegogo’s own agreement with its “partners”, including Prong, provides
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`that, “[e]ach User represents and warrants that its User Content and our use of such User
`Content will not infringe any third party's intellectual property rights, proprietary rights,
`privacy rights, confidentiality, rights of publicity or otherwise violate these Terms or
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`7
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`Prong, Inc. Exh. 1005 p. 7
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 8 of 12
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`applicable law.” Indiegogo, Terms, www. indiegogo.com /about/terms (last accessed
`Feb. 26, 2015).
`27. According to its terms of use, “Indiegogo reserves the right to refuse use of
`the Services to anyone and to reject, cancel, interrupt, remove or suspend any Campaign,
`Contribution, or the Services at any time for any reason without liability.” Id.
`28. On February 26, 2015, by and through the undersigned counsel, the Plaintiffs
`notified the Defendant of the infringements it was perpetrating and demanded that
`Indiegogo cease and desist its activities in making, marketing, offering for sale, selling
`and otherwise promoting the Prong Charger forthwith.
`29. Yet, Indiegogo has refused to cease its sales activities after it was placed on
`notice of the Prong infringements and the pending lawsuit against Prong (and others) in
`which Plaintiffs seek to recover equitable relief and damages for same.
`30. Most recently Indiegogo has offered for sale the Prong Charger at the
`following “early bird specials”:
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`Get em' while they're hot! Early Birds will get the PWR case at a heavily discounted price.
`After the early bird's run out the price goes up to $80. Includes shipping within the
`Continental United States.
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`Be the first to get your hands on a PWR Case, the first all-in-one charging system for the
`iPhone 5/5s and iPhone 6. The PWR Case will later retail for $100 and up. Includes
`shipping within the Continental United States.
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`Includes a PWR Case for the iPhone 6 and an additional backup battery so you don't even
`need to wait for your backup battery to recharge. You can just swap batteries or charge
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`Prong, Inc. Exh. 1005 p. 8
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 9 of 12
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`them both up for those times when you won’t be near an outlet for days. Free shipping
`anywhere in the continental United States is included.
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`Not only will you get a PRE-PRODUCTION PWR Case months before anyone else on
`earth, you will also get a 2nd FINAL PWR Case and an extra backup battery with a
`premium custom engraving when available. Feedback you provide on the pre-
`production units will help us perfect the product. You will get a behind-the-scenes look
`at how a hardware product comes to life. Beta testers will also have the opportunity to
`chat with a Prong founder for 30 minutes about hardware/ entrepreneurship/
`crowdfunding/etc.
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`In that Indiegogo has now been informed of the lawsuit and the ‘486 Patent,
`31.
`to the extent that Indiegogo continued its sales and marketing efforts on behalf of its
`principal Prong, it did so—and continues to do so—with actual knowledge of the ‘486
`Patent and with willful blindness to the Plaintiff’s extensive patent rights in the ‘486
`Patent covering the Prong Charger creation by virtue of Indiegogo’s sales of Prong
`Chargers touted by Prong, which is a technology invented and patented by Zillicon and
`its founder, Sorias.
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`COUNT ONE
`INFRINGEMENT OF U.S. PATENT NO. 8,712,486
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`The Plaintiffs reallege and incorporate by reference the above allegations of
`32.
`this Complaint, as though fully set forth herein.
`The Plaintiffs own and have the rights, title, and interest in and to the
`33.
`Detachably Integrated Battery Charger For Mobile Cell Phones And Like Devices, an invention
`registered with the US Patent and Trademark Office as U.S. Patent No. 8,712,486 (the ‘486
`Patent).
`The 486 Patent’s underlying invention is primarily directed to a mobile
`34.
`phone charger that can be kept attached to the backside of the phone, with AC prongs
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`Prong, Inc. Exh. 1005 p. 9
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 10 of 12
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`folding in opposite directions flatly onto the back of the charger, so the phone with its
`charger can easily fit in one’s pocket.
`35. Upon information and belief, Prong has been fully aware of the prosecution
`of the ‘486 Patent and its eventual issuance. Prong’s principal, Jesse Pliner, has approached
`Sorias on at least one occasion offering to enter into a licensing contract, so that Prong
`might lawfully make and sell the Prong Charger. But Pliner and Sorias could not reach a
`licensing agreement, and the Plaintiffs never granted Prong any rights in connection with
`the ‘486 Patent (and, accordingly, the Prong Charger). Nonetheless, Prong knowingly and
`willfully continued said infringing acts, without a license or any justification at law or in
`equity.
`36. Upon information and belief, as of the filing of this action, Prong has made,
`used, offered to sell and sold within this judicial district the Prong Chargers that directly
`infringes at least one of the claims of the ‘486 Patent.
`37. Upon information and belief, at all pertinent times, Prong had specific intent
`to infringe the ‘486 Patent by virtue of its actual knowledge of the ‘486 Patent.
`38. Upon information and belief, as Prong’s agent, Indiegogo has offered to sell
`and sold in the United States and within this judicial district multiple units of the Prong
`Charger that directly infringe at least one of the claims of the ‘486 Patent. Indeed, deliveries
`of the infringing charger are expected in June 0f 2015.
`Indiegogo continues to infringe, literally and/or under the doctrine of
`39.
`equivalents, one or more claims of the ’486 Patent under 35 U.S.C. § 271 by making,
`offering to sell, marketing, advertising, and selling the infringing Prong Charger by and
`through its Indiegogo online crowd funding platform which is generally described, and
`is accessible at www. indiegogo.com.
`40. Upon information and belief, Indiegogo had specific intent to infringe the
`‘486 Patent by virtue of its agency, business, and profit-sharing arrangement with Prong,
`which had actual knowledge of the ‘486 Patent and/or was willfully blind to the existence
`of the ‘486 Patent, as further set forth above.
`In addition, Indiegogo is acting in concert with Prong in producing,
`41.
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`Prong, Inc. Exh. 1005 p. 10
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 11 of 12
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`supplying and packaging the Prong Charger and, as such, Indiegogo is at least liable as
`a vicarious infringer or as an inducer of infringement of the ‘486 Patent.
`42. As a result of Defendant’s infringing activities with respect to the ‘486
`patent, Plaintiffs have suffered damages in an amount not yet ascertained. Plaintiffs are
`entitled to recover damages adequate to compensate it for Defendant’s infringing
`activities in an amount to be determined at trial, but in no event less than reasonable
`royalties, together with interest and costs. Defendant’s infringement of Plaintiffs’
`exclusive rights under the ‘486 Patent will continue to damage Plaintiffs, causing them
`irreparable harm for which there is no adequate remedy at law, unless enjoined by this
`Court.
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`PRAYER FOR RELIEF
`Plaintiffs request an entry of judgment in their favor against Defendant for the following:
`A declaration that Defendant has infringed one or more claims of the
`a)
`patent-in- suit;
`An award of damages adequate to compensate Plaintiffs for
`b)
`Defendant’s infringement of the patent-in-suit, but in no event less than a
`reasonable royalty, together with prejudgment and post-judgment interest
`and costs, in an amount according to proof;
`An entry of a permanent injunction enjoining Defendant, and its
`c)
`respective officers, agents, employees, and those acting in privity with it,
`from further infringement of the patent-in-suit, or in the alternative,
`awarding a royalty for post-judgment infringement; and
`An award to Plaintiffs of such other costs and further relief as the
`d)
`Court may deem just and proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiffs
`respectfully requests a trial by jury.
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`Dated: March 17, 2015
`New York, New York
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`RESPECTFULLY SUBMITTED:
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`SAM P. ISRAEL, P.C.
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`11
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`Prong, Inc. Exh. 1005 p. 11
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`Case 1:15-cv-02118-VEC Document 1 Filed 03/20/15 Page 12 of 12
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`By:
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`Sam P. Israel (SPI0270)
`Timothy L. Foster (TF0017)
`Eleonora Zlotnikova (EZ8814)
`Attorneys for Plaintiffs Yeoshua Sorias and
`Zilicon Accessories LLC
`1 Liberty Plaza, Thirty-Fifth Floor
`New York, New York 10006
`T: 646-787-9880 I F: 646-787-9886
`samisrael@spi-pc.com
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`12
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`Prong, Inc. Exh. 1005 p. 12
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`Case 1:15-cv-02118-VEC Document 1-1 Filed 03/20/15 Page 1 of 15
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`EXHIBIT A
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`Prong, Inc. Exh. 1005 p. 13
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`Prong, Inc. Exh. 1005 p. 14
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`Prong, Inc. Exh. 1005 p. 15
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`Prong, Inc. Exh. 1005 p. 16
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`Prong, Inc. Exh. 1005 p. 24
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`Prong, Inc. Exh. 1005 p. 25
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`Prong, Inc. Exh. 1005 p. 26
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`Prong, Inc. Exh. 1005 p. 27
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