Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 1 of 35 Page ID #:246
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`
`ANDREW Y. CHOUNG –State Bar No. 203192
`achoung@glaserweil.com
`CHARLES C. KOOLE –State Bar No. 259997
`ckoole@glaserweil.com
`GLASER WEIL FINK HOWARD
` AVCHEN & SHAPIRO LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, California 90067
`Telephone: (310) 553-3000
`Facsimile: (310) 556-2920
`
`DEAN E. MCCONNELL (pro hac vice)
`dean@dean-mcconnell.com
`DEAN MCCONNELL INTELLECTUAL
` PROPERTY LAW FIRM
`120 East Market Street
`Indianapolis, Indiana 46204
`Telephone: (317) 336-2530
`Facsimile: (317) 653-2661
`
`Attorneys for Defendants and Counterclaimants
`VOXX International Corporation, VOXX Electronics
`Corporation, and Invision Automotive Systems, Inc.
`
` UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
`CASE NO. 5:14-cv-2591-ODW-DTB
`
`JOHNSON SAFETY, INC.,
` Plaintiff,
`
`v.
`
`VOXX INTERNATIONAL
`CORPORATION, VOXX
`ELECTRONICS CORPORATION, and
`INVISION AUTOMOTIVE
`SYSTEMS, INC.,
` Defendants.
`
`VOXX INTERNATIONAL
`CORPORATION, VOXX
`ELECTRONICS CORPORATION, and
`INVISION AUTOMOTIVE
`SYSTEMS, INC.,
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`1031166
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`COUNTERCLAIMS OF
`DEFENDANTS AND
`COUNTERCLAIMANTS
`VOXX INTERNATIONAL
`CORPORATION, VOXX
`ELECTRONICS CORPORATION,
`AND INVISION AUTOMOTIVE
`SYSTEMS, INC.
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`
`
`DEMAND FOR JURY TRIAL
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`
`
`COUNTERCLAIMS
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`Page 1 of 35
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`PETITIONER'S EXHIBIT 1004
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 2 of 35 Page ID #:247
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` Counterclaimants,
`
`v.
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`JOHNSON SAFETY, INC., and
`MYRON & DAVIS, INC.,
` Counterdefendants.
`
`
`
`Counterclaimants VOXX International Corporation (“VOXX”), VOXX
`
`Electronics Corporation (“VEC”), and Invision Automotive Systems, Inc.
`(“Invision”), for their counterclaims against Counterdefendants Johnson Safety, Inc.
`(“Johnson Safety”) and Myron & Davis, Inc. (“M&D”), aver as follows:
`PARTIES
`VOXX is a corporation organized and existing under the laws of the
`1.
`State of Delaware, with its principal place of business at 180 Marcus Blvd.,
`Hauppauge, NY 11788.
`VEC is a corporation organized and existing under the laws of the State
`2.
`of Delaware, with its principal place of business at 150 Marcus Blvd., Hauppauge,
`NY 11788. VEC is a wholly-owned subsidiary of VOXX and was formerly known as
`Audiovox Electronics Corporation.
`Invision is a corporation organized and existing under the laws of the
`3.
`State of Delaware, with its principal place of business at 2822 Commerce Park Drive,
`Orlando, FL 32819. Invision is a wholly-owned subsidiary of VOXX.
`Upon information and belief, Johnson Safety is a California corporation
`4.
`with its corporate headquarters and principal place of business at 1425 Cooley Ct.,
`San Bernardino, CA 92408.
`Upon information and belief, M&D is a California corporation with its
`5.
`corporate headquarters and principal place of business at 1425 Cooley Ct., San
`Bernardino, CA 92408.
`Upon information and belief, M&D is owned by Johnson Safety and
`6.
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`markets, promotes, advertises, sells, offers to sell, and imports into the United States
`the products complained of herein by Counterclaimants.
`Upon information and belief, M&D markets, promotes, advertises, and
`7.
`provides support to its distributors, retailers, and customers through its website
`located at www.myronanddavis.com.
`Upon information and belief, M&D is not in good standing with the State
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`of California as the California Secretary of State’s online business records list M&D’s
`current status as “FTB Suspended.”
`As used in Counts I-V below, Counterclaimants refer to Johnson Safety
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`and M&D collectively as “Johnson.”
`JURISDICTION AND VENUE
`10. Certain counterclaims set forth herein arise under the patent laws of the
`United States, Title 35 United States Code, particularly §§ 271, 281, 283, 284 and
`285. This Court has subject matter jurisdiction over these claims for patent
`infringement pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`11. This Court has supplemental jurisdiction over certain other
`counterclaims pursuant to 28 U.S.C. §§ 1367, 2201, and 2202. Certain counterclaims
`set forth herein seek a declaration of non-infringement and/or invalidity of U.S. Patent
`No. 6,871,356 (the “`356 Patent”), U.S. Patent No. 7,267,402 (the “`402 Patent”),
`U.S. Patent No. 7,379,125 (the “`125 Patent”), U.S. Patent No. 7,448,679 (the “`679
`Patent”), and U.S. Patent No. 7,894,003 (the “`003 Patent”) (collectively, the
`“Johnson Asserted Patents”).
`12. This Court has personal jurisdiction over Johnson Safety and M&D by
`virtue of the fact that both entities are California Corporations with their corporate
`headquarters and principal place of business at 1425 Cooley Ct., San Bernardino, CA
`92408. This Court further has personal jurisdiction over Johnson Safety by way of it
`submitting itself to the personal jurisdiction of this Court by filing the original
`Complaint against the Counterclaimants in this action.
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 4 of 35 Page ID #:249
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`In a Complaint dated December 19, 2014 (“Complaint”), Johnson Safety
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`avers, among other things, that Johnson Safety is the assignee of the Johnson Asserted
`Patents; and that Counterclaimants have infringed, have induced others to infringe,
`and/or have committed acts of contributory infringement of one or more claims of the
`Johnson Asserted Patents by making, using, offering for sale, selling, and/or
`importing into the United States certain video systems embodying the patented
`inventions.
`14. Counterclaimants deny liability for alleged infringement of the Johnson
`Asserted Patents.
`15. Accordingly, there is an actual and justiciable controversy between
`Counterclaimants and Johnson as set forth below.
`16. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b)-(d) and
`1400(b). Further, Johnson is headquartered in this District and does business in this
`District.
`
`VOXX PATENTS
`U.S. Patent No. 5,775,762
`17. On July 7, 1998, United States Patent No. 5,775,762, entitled “Overhead
`Console Having Flip-Down Monitor” (the “`762 Patent”), was duly and legally issued
`by the United States Patent & Trademark Office (“USPTO”). A true and correct copy
`of the `762 Patent is attached hereto as Exhibit A.
`18. Pursuant to 35 U.S.C. § 282, the `762 Patent is presumed valid.
`19. VOXX is the owner of all right, title, and interest in and to the `762
`Patent.
`20. Prior to filing these counterclaims, VOXX complied with the marking
`requirement pursuant to 35 U.S.C. § 287(a) and is entitled to recover for past damages
`for Johnson’s infringement of the `762 Patent.
`U.S. Patent No. 6,678,892
`21. On January 13, 2004, United States Patent No. 6,678,892, entitled
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`“Multimedia Entertainment Unit for Use in a Vehicle” (the “`892 Patent”), was duly
`and legally issued by the USPTO. A true and correct copy of the `892 Patent is
`attached hereto as Exhibit B.
`22. Pursuant to 35 U.S.C. § 282, the `892 Patent is presumed valid.
`23. VOXX is the owner of all right, title, and interest in and to the `892
`Patent.
`24. Prior to filing these counterclaims, VOXX complied with the marking
`requirement pursuant to 35 U.S.C. § 287(a) and is entitled to recover for past damages
`for Johnson’s infringement of the `892 Patent.
`U.S. Patent No. 7,050,124
`25. On May 23, 2006, United States Patent No. 7,050,124, entitled “Mobile
`Video System” (the “`124 Patent”), was duly and legally issued by the USPTO. A
`true and correct copy of the `124 Patent is attached hereto as Exhibit C.
`26. Pursuant to 35 U.S.C. § 282, the `124 Patent is presumed valid.
`27. VOXX is the owner of all right, title, and interest in and to the `124
`Patent.
`28. Prior to filing these counterclaims, VOXX complied with the marking
`requirement pursuant to 35 U.S.C. § 287(a) and is entitled to recover for past damages
`for Johnson’s infringement of the `124 Patent.
`U.S. Patent No. 7,245,274
`29. On July 17, 2007, United States Patent No. 7,245,274, entitled “Headrest
`Mountable Video System” (the “`274 Patent”), was duly and legally issued by the
`USPTO. A true and correct copy of the `274 Patent is attached hereto as Exhibit D.
`30. Pursuant to 35 U.S.C. § 282, the `274 Patent is presumed valid.
`31. VOXX is the owner of all right, title, and interest in and to the `274
`Patent.
`32. Prior to filing these counterclaims, VOXX complied with the marking
`requirement pursuant to 35 U.S.C. § 287(a) and is entitled to recover for past damages
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`for Johnson’s infringement of the `274 Patent.
`U.S. Patent No. 7,839,355
`33. On March 16, 2010, United States Patent No. 7,839,355, entitled
`“Vehicle Display Device Having a Wireless Transmitter” (the “`355 Patent”), was
`duly and legally issued by the USPTO. A true and correct copy of the `355 Patent is
`attached hereto as Exhibit E.
`34. Pursuant to 35 U.S.C. § 282, the `355 Patent is presumed valid.
`35. VOXX is the owner of all right, title, and interest in and to the `355
`Patent.
`36. Prior to filing these counterclaims, VOXX complied with the marking
`requirement pursuant to 35 U.S.C. § 287(a) and is entitled to recover for past damages
`for Johnson’s infringement of the `355 Patent.
`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 5,775,762
`37. Counterclaimant VOXX repeats and realleges each and every averment
`contained in paragraphs 1-36 above as though fully set forth herein.
`Johnson has been and is now making, using, selling, offering for sale
`38.
`within the United States, and/or importing into the United States, at least the
`following overhead mounted video systems: SDM107, SDM108, and SDM185, and
`upon information and belief other overhead mounted video systems, that infringe one
`or more claims of the `762 Patent (collectively hereinafter, the “Accused Johnson
`Overhead Video Systems”).
`
`Direct Infringement
`Johnson has directly infringed and continues to directly infringe at least
`39.
`claim 1 of the `762 Patent, either literally or under the doctrine of equivalents.
`Indirect Infringement
`a)
`Induced Infringement
`Johnson has had actual knowledge of the `762 Patent at least since the
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`filing of these Counterclaims.
`41. Upon information and belief, Johnson knew of, or was willfully blind
`towards, the `762 Patent since at least June 2002, when the `762 Patent was cited
`during prosecution of U.S. Patent No. 6,409,242 (hereinafter the “`242 Patent”),
`which is purportedly owned by Johnson.
`42. Upon information and belief, Johnson knew of, or was willfully blind
`towards, the `762 Patent since at least May 22, 2007, when the `762 Patent was cited
`in an Information Disclosure Statement submitted by Johnson during prosecution of
`the `125 Patent, which is purportedly owned by Johnson.
`43. Upon information and belief, Chung L. Chang is the sole inventor of the
``242 Patent and the `125 Patent.
`44. Upon information and belief, Mr. Chang is the President of Johnson and
`a principal individual involved in the formation of Johnson and entities related to
`Johnson such as, for example, M&D.
`45. Upon information and belief, Mr. Chang is a shareholder and at least part
`owner of Johnson.
`46. Upon information and belief, Johnson is a closely-held, family owned
`and operated corporation.
`47. Upon information and belief, Mr. Chang is the sole inventor or a joint
`inventor listed on numerous U.S. Patents owned by Johnson that relate to video
`systems that may be used in vehicles and which are the subject of this action and thus
`is intimately aware of patents in this field.
`48. Upon information and belief, by way of Mr. Chang’s involvement with
`Johnson, Mr. Chang’s ownership interest in Johnson, Mr. Chang being listed as the
`sole inventor on at least two or more U.S. Patents that cite the `762 Patent as being
`known prior art to Johnson, Johnson alleging in the Complaint that VOXX and its
`related entities are direct competitors of Johnson, and Mr. Chang being listed as an
`inventor on numerous video systems in which a U.S. Patent was granted, Johnson
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`knew of, or was willfully blind towards, the `762 Patent since at least June 2002.
`49. Since becoming aware of, or being willfully blind towards, the `762
`Patent, Johnson has continued to intentionally, actively, and knowingly make, use,
`sell, offer to sell, and/or import one or more of the Accused Johnson Overhead Video
`Systems through its retailers, resellers, distributors, as well as in other ways.
`50. Since becoming aware of, or willfully blind towards, the `762 Patent,
`Johnson’s advertising, sales, instructions, and/or installation in relation to the
`Accused Johnson Overhead Video Systems have intentionally, actively, knowingly,
`and willfully contained and continue to contain instructions, directions, suggestions,
`and/or invitations that intentionally, actively, and knowingly invite, entice, lead on,
`influence, encourage, prevail on, move by persuasion, cause, and/or influence the
`public, Johnson’s distributors, retailers, and/or customers to, at least, make, use, sell,
`offer to sell, and/or import one or more of the Accused Johnson Overhead Video
`Systems to practice the inventions claimed in the `762 Patent, and thus directly
`infringe at least claim 1 of the `762 Patent, either literally or under the doctrine of
`equivalents.
`51. Since becoming aware of, or being willfully blind towards, the `762
`Patent, Johnson knew or should have known that the public’s, distributors’, retailers’,
`and/or customer’s acts relative to the Accused Johnson Overhead Video Systems
`practice the inventions claimed in the `762 Patent, directly infringe, either literally or
`under the doctrine of equivalents, at least claim 1 of the `762 Patent.
`52. For these reasons, Johnson is liable for inducing infringement of at least
`claim 1 of the `762 Patent, either literally or under the doctrine of equivalents.
`b)
`Contributory Infringement
`53. At least for the reasons set forth above, Johnson has had actual
`knowledge of, or was willfully blind towards, the `762 Patent.
`54. Since becoming aware of, or being willfully blind towards, the `762
`Patent, Johnson has intentionally, actively, and knowingly sold and offered to sell the
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`Accused Johnson Overhead Video Systems within the United States, or imported the
`Accused Johnson Overhead Video Systems into the United States.
`55. The Accused Johnson Overhead Video Systems are a component of a
`patented machine, manufacture, and/or combination because the Accused Johnson
`Overhead Video Systems meet at least one element of at least claim 1 of the `762
`Patent, either literally or under the doctrine of equivalents.
`56. The Accused Johnson Overhead Video Systems are a material part of the
`invention of at least claim 1 of the `762 Patent, either literally or under the doctrine of
`equivalents, because the majority of the elements of at least claim 1 are present in the
`Accused Johnson Overhead Systems, either literally or under the doctrine of
`equivalents, and for the reasons set forth herein, lack a substantial non-infringing use.
`57. The Accused Johnson Overhead Video Systems are especially made or
`especially adapted for use in an infringement, at least because the act of using in any
`manner, making, selling, offering to sell, or importing one or more of the Accused
`Johnson Overhead Video Systems when not mounted to an interior surface of a roof
`of a vehicle, as well as the act of mounting one or more of the Accused Johnson
`Overhead Video Systems to an interior surface of a vehicle, are both a direct
`infringement of at least claim 1 of the `762 Patent, either literally or under the
`doctrine of equivalents.
`58. Since becoming aware of, or being willfully blind towards, the `762
`Patent, Johnson was willfully blind or knew that the Accused Johnson Overhead
`Video Systems were especially made or especially adapted for use in an infringement.
`59. The Accused Johnson Overhead Video Systems are not a staple article or
`commodity of commerce suitable for substantial noninfringing use because the
`Accused Johnson Overhead Video Systems themselves meet every element of at least
`claim 1 of the `762 Patent, either literally or under the doctrine of equivalents, and
`thus cannot be used, sold, offered for sale, or imported without infringing at least
`claim 1 of the `762 Patent, either literally or under the doctrine of equivalents.
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`Alternatively, to the extent that the Accused Johnson Overhead Video Systems
`themselves are found not to meet every element (e.g., an interior ceiling of a vehicle)
`found to be part of at least claim 1 of the `762 Patent, either literally or under the
`doctrine of equivalents, the Accused Johnson Overhead Video Systems meet the vast
`majority of the elements of at least claim 1 of the `762 Patent, either literally or under
`the doctrine of equivalents, and have no other substantial use than to be used in
`combination with the remaining element(s) of at least claim 1 of the `762 Patent,
`either literally or under the doctrine of equivalents.
`60. Since becoming aware of, or being willfully blind towards, the `762
`Patent, Johnson was willfully blind or knew that the Accused Johnson Overhead
`Video Systems were not a staple article or commodity of commerce suitable for
`substantial noninfringing use.
`61. By selling, offering to sell, and/or importing into the United States one or
`more of the Accused Johnson Overhead Video Systems and/or components thereof,
`Johnson has contributed toward the infringement by the public, distributors, and
`customers who mount one or more of the Accused Johnson Overhead Video Systems
`to an interior ceiling of a vehicle, or otherwise import, make, use, sell, offer to sell,
`lease, and/or offer to lease one or more of the Accused Johnson Overhead Video
`Systems, and thus directly infringe at least claim 1 of the `762 Patent, either literally
`or under the doctrine of equivalents.
`62. For these reasons, Johnson is a contributory infringer of at least claim 1
`of the `762 Patent, either literally or under the doctrine of equivalents.
`COUNT II
`INFRINGEMENT OF U.S. PATENT NO. 6,678,892
`63. Counterclaimant VOXX repeats and realleges each and every averment
`contained in paragraphs 1-62 above as though fully set forth herein.
` Johnson has been and is now making, using, selling, offering for sale
`64.
`within the United States, and/or importing into the United States, at least the
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 11 of 35 Page ID #:256
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`following headrest monitor system: KHDM7, and upon information and belief other
`headrest monitor systems, that infringe one or more claims of the `892 Patent
`(collectively hereinafter, the “Accused Johnson Headrest Monitor Systems”).
`Direct Infringement
`Johnson has directly infringed and continues to directly infringe at least
`65.
`claim 1 of the `892 Patent, either literally or under the doctrine of equivalents.
`Indirect Infringement
`a)
`Induced Infringement
`Johnson has had actual knowledge of the `892 Patent since at least the
`66.
`filing of these Counterclaims.
`Johnson has had actual knowledge of the `892 Patent since at least
`67.
`August 2005 as the `892 Patent was a reference relied upon by VEC (formerly
`Audiovox Electronics Corporation) during Inter Partes Reexamination Control No.
`95/000,103 of the `356 Patent, which is purportedly owned by Johnson.
`68. Upon information and belief, Johnson knew of, or was willfully blind
`towards, the `892 Patent since at least April 23, 2007, when the `892 Patent was cited
`in an Information Disclosure Statement submitted by Johnson during prosecution of
`the `402 Patent, which is purportedly owned by Johnson.
`69. Upon information and belief, Johnson knew of, or was willfully blind
`towards, the `892 Patent since at least May 22, 2007, when the `892 Patent was cited
`in an Information Disclosure Statement submitted by Johnson during prosecution of
`the `125 Patent, which is purportedly owned by Johnson.
`70. Upon information and belief, Johnson knew of, or was willfully blind
`towards, the `892 Patent since at least May 22, 2007, when the `892 Patent was cited
`in an Information Disclosure Statement submitted by Johnson during prosecution of
`the `679 Patent, which is purportedly owned by Johnson.
`71. Upon information and belief, Johnson knew of, or was willfully blind
`towards, the `892 Patent since at least October 1, 2008, when the `892 Patent was
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 12 of 35 Page ID #:257
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`cited in an Information Disclosure Statement submitted by Johnson during
`prosecution of the `003 Patent, which is purportedly owned by Johnson.
`72. Upon information and belief, Chung L. Chang is the sole inventor of the
``402 Patent, the `125 Patent, the `679 Patent, and the `003 Patent.
`73. Upon information and belief, Mr. Chang is the President of Johnson and
`a principal individual involved in the formation of Johnson and entities related to
`Johnson such as, for example, M&D.
`74. Upon information and belief, Mr. Chang is a shareholder and at least part
`owner of Johnson.
`75. Upon information and belief, Johnson is a closely-held, family owned
`and operated corporation.
`76. Upon information and belief, Mr. Chang is the sole inventor or a joint
`inventor listed on numerous U.S. Patents owned by Johnson that relate to video
`systems that may be used in vehicles and which are the subject of this action.
`77. Upon information and belief, by way of Mr. Chang’s involvement with
`Johnson, Mr. Chang’s ownership interest in Johnson, Mr. Chang being listed as the
`sole inventor on at least four or more U.S. Patents that cite the `892 Patent as being
`known prior art to Johnson, Johnson alleging in the Complaint that VOXX and their
`related entities are direct competitors of Johnson, and Mr. Chang being listed as an
`inventor on numerous video systems in which a U.S. Patent was granted, Johnson
`knew of, or was willfully blind towards, the `892 Patent since at least August 2005.
`78. Since becoming aware of, or being willfully blind towards, the `892
`Patent, Johnson has continued to intentionally, actively, and knowingly make, use,
`sell, offer to sell, and/or import one or more of the Accused Johnson Headrest
`Monitor Systems through its retailers, resellers, distributors, as well as in other ways.
`79. Since becoming aware of, or willfully blind towards, the `892 Patent,
`Johnson’s advertising, sales, instructions and/or installation in relation to the Accused
`Johnson Headrest Monitor Systems having intentionally, actively, knowingly, and
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 13 of 35 Page ID #:258
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`willfully contained and continue to contain instructions, directions, suggestions,
`and/or invitations that intentionally, actively, and knowingly invite, entice, lead on,
`influence, encourage, prevail on, move by persuasion, cause, and/or influence the
`public, Johnson’s distributors, retailers, and/or customers to, at least, make, use, sell,
`offer to sell, and/or import one or more of the Accused Johnson Headrest Monitor
`Systems to practice the inventions claimed in the `892 Patent, and thus directly
`infringe at least claim 1 of the `892 Patent, either literally or under the doctrine of
`equivalents.
`80. Since becoming aware of, or being willfully blind towards, the `892
`Patent, Johnson knew or should have known that the public’s, distributors’, retailers’,
`and/or customer’s acts relative to the Accused Johnson Headrest Monitor Systems
`practice the inventions claimed in the `892 Patent, directly infringe, either literally or
`under the doctrine of equivalents, at least claim 1 of the `892 Patent.
`81. For these reasons, Johnson is liable for inducing infringement of at least
`claim 1 of the `892 Patent, either literally or under the doctrine of equivalents.
`b)
`Contributory Infringement
`82. At least for the reasons set forth above, Johnson has had actual
`knowledge of, or was willfully blind towards, the `892 Patent.
`83. Since becoming aware of, or being willfully blind towards, the `892
`Patent, Johnson has intentionally, actively, and knowingly sold and offered to sell the
`Accused Johnson Headrest Monitor Systems within the United States, or imported the
`Accused Johnson Headrest Monitor Systems into the United States.
`84. The Accused Johnson Headrest Monitor Systems are a component of a
`patented machine, manufacture, and/or combination because the Accused Johnson
`Headrest Monitor Systems meet at least one element of at least claim 1 of the `892
`Patent, either literally or under the doctrine of equivalents.
`85. The Accused Johnson Headrest Monitor Systems are a material part of
`the invention of at least claim 1 of the `892 Patent, either literally or under the
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 14 of 35 Page ID #:259
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`doctrine of equivalents, because the majority of the elements of at least claim 1 are
`present in the Accused Johnson Headrest Monitor Systems, either literally or under
`the doctrine of equivalents, and for the reasons set forth herein, and lack a substantial
`non-infringing use.
`86. The Accused Johnson Headrest Monitor Systems are especially made or
`especially adapted for use in an infringement, at least because the act of using in any
`manner, making, selling, offering to sell, or importing one or more of the Accused
`Johnson Headrest Monitor Systems when not mounted to an interior surface of a
`vehicle, as well as the act of mounting one or more of the Accused Johnson Headrest
`Monitor Systems to an interior surface of a vehicle, are both a direct infringement of
`at least claim 1 of the `892 Patent, either literally or under the doctrine of equivalents.
`87. Since becoming aware of, or being willfully blind towards, the `892
`Patent, Johnson was willfully blind or knew that the Accused Johnson Headrest
`Monitor Systems were especially made or especially adapted for use in an
`infringement.
`88. The Accused Johnson Headrest Monitor Systems are not a staple article
`or commodity of commerce suitable for substantial noninfringing use because the
`Accused Johnson Headrest Monitor Systems themselves meet every element of at
`least claim 1 of the `892 Patent, either literally or under the doctrine of equivalents,
`and thus cannot be used, sold, offered for sale, or imported without infringing at least
`claim 1 of the `892 Patent, either literally or under the doctrine of equivalents.
`Alternatively, to the extent that the Accused Johnson Headrest Monitor Systems
`themselves are found not to meet every element (e.g., an interior surface of a vehicle)
`found to be part of at least claim 1 of the `892 Patent, either literally or under the
`doctrine of equivalents, the Accused Johnson Headrest Monitor Systems meet the vast
`majority of the elements of at least claim 1 of the `892 Patent, either literally or under
`the doctrine of equivalents, and have no other substantial use other than to be used in
`combination with the remaining element(s) of at least claim 1 of the `892 Patent,
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`Case 5:14-cv-02591-ODW-DTB Document 42 Filed 05/20/15 Page 15 of 35 Page ID #:260
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`either literally or under the doctrine of equivalents.
`89. Since becoming aware of, or being willfully blind towards, the `892
`Patent, Johnson was willfully blind or knew that the Accused Johnson Headrest
`Monitor Systems were not a staple article or commodity of commerce suitable for
`substantial noninfringing use.
`90. By selling, offering to sell, and/or importing into the United States one or
`more of the Accused Johnson Headrest Monitor Systems and/or components thereof,
`Johnson has contributed toward the infringement by the public, distributors, and
`customers who mount one or more of the Accused Johnson Headrest Monitor
`Systems to an interior surface of a vehicle, or otherwise import, make, use, sell, offer
`to sell, lease, and/or offer to lease one or more of the Accused Johnson Headrest
`Monitor Systems, and thus directly infringe at least claim 1 of the `892 Patent, either
`literally or under the doctrine of equivalents.
`91. For these reasons, Johnson is a contributory infringer of at least claim 1
`of the `892 Patent, either literally or under the doctrine of equivalents.
`COUNT III
`INFRINGEMENT OF U.S. PATENT NO. 7,050,124
`92. Counterclaimant VOXX repeats and realleges each and every averment
`contained in paragraphs 1-91 above as though fully set forth herein.
`Johnson has been and is now making, using, selling, offering for sale
`93.
`within the United States, and/or importing into the United States, at least the
`following overhead mounted video systems: the Accused Johnson Overhead Video
`Systems, the Accused Johnson Headrest Monitor Systems, and upon information and
`belief other video systems, that infringe one or more claims of the `124 Patent.
`Direct Infringement
`Johnson has directly infringed and continues to directly infringe at least
`94.
`claim 51 of t