`
`
`
`
`
`Merrill Communications LLC
`d/b/a Merrill Corporation
`Exhibit 1012
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 1 of 12 PageID #: 830
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
`
`
`
`
`
`MATTRESS FIRM HOLDING CORP.,
`MERRILL COMMUNICATIONS LLC, AND
`MERRILL CORPORATION,
`
`
`
`
`
`
`
`
`Civil Action No.: 17-933-RGA
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`Defendants.
`
`FIRST AMENDED COMPLAINT
`
`Plaintiffs, e-Numerate Solutions, Inc. (“ESI”) and e-Numerate, LLC, bring this action
`
`against Defendants Mattress Firm Holding Corp. (“Mattress Firm”), Merrill Communications
`
`LLC, (“Merrill Communications”) and Merrill Corporation and allege the following:
`
`THE PARTIES
`
`1.
`
`Plaintiff ESI is a corporation organized and existing under the laws of the State of
`
`Delaware with its principal place of business located in Great Falls, VA.
`
`2.
`
`Plaintiff e-Numerate, LLC is a limited liability corporation organized and existing
`
`under the laws of Delaware with its principal place of business located in Reston, VA.
`
`3.
`
`ESI is the owner of record and assignee of United States Patents 7,650,355 (“the
`
`‘355 patent”); 8,185,816 (“the ‘816 patent”); 9,262,383 (“the ‘383 patent”); and 9,268,748 (“the
`
`‘748 patent”) (collectively, “the Asserted Patents”).
`
`4.
`
`Plaintiff e-Numerate, LLC is the exclusive licensee of the Asserted Patents and
`
`has the exclusive right to pursue this lawsuit based on infringement of the Asserted Patents.
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 2 of 12 PageID #: 831
`
`5.
`
`Defendant Mattress Firm is a corporation organized and existing under the laws of
`
`the State of Delaware with its principal place of business at 5815 Gulf Freeway, Houston, TX
`
`77023. Mattress Firm’s agent for service of process is The Corporation Trust Company,
`
`Corporation Trust Center, 1209 Orange Street, Wilmington, DE 19801.
`
`6.
`
`Defendant Merrill Communications is a Delaware limited liability company with
`
`its principal place of business at One Merrill Circle, St. Paul, MN 55108. Merrill
`
`Communications’ agent for service of process is Corporation Service Company, 251 Little Falls
`
`Dr., Wilmington, DE 19808
`
`7.
`
`Defendant Merrill Corporation is a corporation organized and existing under the
`
`laws of Minnesota with its principal place of business at 1 Merrill Circle, St Paul, MN 55108.
`
`JURISDICTION AND VENUE
`
`8.
`
`This is an action for patent infringement arising under the patent laws of the
`
`United States, 35 U.S.C. § 271, et seq.
`
`9.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`10.
`
`This Court has personal jurisdiction over Defendant Mattress Firm since
`
`Defendant Mattress Firm is a Delaware corporation and Defendant Mattress Firm has regularly
`
`transacted business in this judicial district, directly or through intermediaries including various
`
`Mattress Firm subsidiaries. On information and belief, Defendant Mattress Firm or its
`
`subsidiaries operate multiple retail outlets within Delaware.
`
`11.
`
`This Court has personal jurisdiction over Defendant Merrill Communications
`
`since Defendant Merrill Communications is a Delaware Limited Liability Company and, upon
`
`information and belief, has regularly transacted business in this district.
`
`2
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 3 of 12 PageID #: 832
`
`12.
`
`Upon information and belief, this Court has personal jurisdiction over Defendant
`
`Merrill Corporation since Merrill Corporation has regularly transacted business in this judicial
`
`district directly or through intermediaries including Merrill Communications. Upon information
`
`and belief, Merrill Corporation maintains a work-from-home program that includes employees
`
`located in this jurisdiction. A listing of the various work from home locations for Merrill
`
`Corporation is shown in Exhibit A which can be found on the world wide web at:
`
`https://hrx.talx.com/Files/Division143/Merrill%20Corporation%20List%20of%20Locations.pdf
`
`13.
`
`Venue in this district is proper pursuant to 28 U.S.C. §§ 1391(c) and (d), and
`
`1400(b). Defendant Mattress Firm resides in Delaware since it is a Delaware Corporation.
`
`Defendant Merrill Communications resides in Delaware since it is a Delaware LLC. Upon
`
`information and belief, venue is appropriate as to Defendant Merrill Corporation because it has
`
`committed acts of infringement in this district either directly or through its subsidiaries including
`
`Defendant Merrill Communications. Upon further information and belief, Defendant Merrill
`
`Corporation has a regular and established place of business in this district including via its work-
`
`from-home locations in Delaware.
`
`14.
`
`Joinder of Mattress Firm, Merrill Communications and Merrill Corporation is
`
`appropriate under 35 U.S.C. § 299 because the claims herein relate to same transaction,
`
`occurrence, or series of transactions or occurrences relating to the making, using, importing into
`
`the United States, offering for sale, or selling of the same accused product or process; and
`
`questions of fact common to all defendants or counterclaim defendants will arise in the action.
`
`The Defendants in this action are in a supplier-customer relationship.
`
`BACKGROUND
`
`15.
`
`Inventor Russell T. Davis pioneered several inventions related to Reusable Data
`
`3
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 4 of 12 PageID #: 833
`
`Markup Language including, but not limited to, the Asserted Patents.
`
`16.
`
`Upon information and belief, Defendant Merrill Corporation markets the Merrill
`
`Bridge product to assist companies in filing reports in the eXtensible Business Reporting
`
`Language (“XBRL”)
`
`17.
`
`Upon information and belief, Merrill Corporation’s customers enter into contracts
`
`with Merrill Corporation via Merrill Communications. A standard contract is attached hereto as
`
`Exhibit B.
`
`18. Mattress Firm uses the eXtensible Business Reporting Language standard to
`
`routinely file documents with, inter alia, the Securities and Exchange Commission (“SEC”). An
`
`example of a Mattress Firm SEC filing is located at:
`
`https://www.sec.gov/Archives/edgar/data/1419852/000141985216000022/0001419852-16-
`
`000022-index.htm. Upon information and belief, Mattress Firm uses Merrill Bridge to prepare
`
`its filings.
`
`19.
`
`Upon information and belief, Merrill Corporation and/or Merrill Communications
`
`has agreed to defend and indemnify Mattress Firm for the claims set forth in this Complaint.
`
`COUNT I: INFRINGEMENT OF THE U.S. PATENT 7,650,355
`
`20.
`
`Plaintiffs re-allege and incorporate by reference the prior paragraphs 1 through 19
`
`of this Complaint, as if fully set forth herein.
`
`21.
`
`On January 19, 2010, U.S. Patent No. 7,650,355 was duly and legally issued to
`
`Russell T. Davis as the inventor thereof. A true and correct copy of the ‘355 Patent, which is
`
`entitled “Reusable Macro Markup Language”, is attached hereto as Exhibit C.
`
`22.
`
`Upon information and belief, Defendant Mattress Firm has infringed the ‘355
`
`Patent in violation of 35 U.S.C. § 271(a) by using the patented invention to, inter alia, prepare
`
`4
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 5 of 12 PageID #: 834
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`and file multiple XBRL-compliant filings. This includes practicing the method set forth in
`
`claim 1 of the ‘355 patent; using a system as claimed in claim 27 of the ‘355 patent; using a
`
`computer readable medium as set forth in claim 28 of the ‘355 patent; and using a system as set
`
`forth in claim 54 of the ‘355 patent. An Infringement Chart detailing the infringement by
`
`Defendant Mattress Firm of Claims 1, 27, 28 and 54 of the ‘355 Patent is attached hereto as
`
`Exhibit D.
`
`23.
`
`Upon information and belief, defendant Merrill Communications and Merrill
`
`Corporation have directly infringed the ‘355 patent by making, using, selling or offering to sell
`
`the Merrill Bridge product to its customers and prospective customers. Use of the Merrill Bridge
`
`product by, for example, Mattress Firm, is demonstrated in the chart set forth in Exhibit D.
`
`24.
`
`Defendants Merrill Corporation and Merrill Communications have infringed the
`
`‘355 patent by inducing others to engage in direct infringement under 35 U.S.C. § 271(a) with
`
`knowledge and an intent to induce the specific acts and to cause infringement.
`
`25.
`
`Defendant Mattress Firm has had knowledge of the ‘355 patent at least as early as
`
`August 18, 2016, by virtue of a letter sent from William Diefenderfer, ESI’s Vice-Chairman &
`
`Co-Founder, to Ms. Kindel L. Elam, the General Counsel of Mattress Firm Holdings.
`
`26.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communication have had knowledge of the ‘355 patent on or about August 18, 2016 when
`
`Defendant Mattress Firm requested indemnification from Merrill Corporation and/or Merrill
`
`Communications.
`
`27.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communications, Inc. have contributed to infringement under 35 U.S.C. §271(c) by selling
`
`within the United States components used by its customers to infringe the ‘355 patent knowing
`
`5
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 6 of 12 PageID #: 835
`
`that these components: (a) are especially made for use in infringing products, and (b) are not a
`
`staple articles of commerce suitable for substantial non-infringing use.
`
`28.
`
`Upon information and belief, Mattress Firm’s infringement has been and
`
`continues to be willful.
`
`29.
`
`Upon information and belief, Merrill Corporations and Merrill Communications
`
`infringement has been and continues to be willful.
`
`30.
`
`Plaintiffs are entitled to recover damages as a result of Mattress Firm’s, Merrill
`
`Corporation’s, and Merrill Communications’ acts of infringement of the ‘355 Patent in amounts
`
`subject to proof at trial.
`
`COUNT II: INFRINGEMENT OF THE ‘816 PATENT
`
`31.
`
`Plaintiffs re-allege and incorporate by reference the prior paragraphs 1 through 19
`
`of this Complaint, as if fully set forth herein.
`
`32.
`
`On May 22, 2012, U.S. Patent No. 8,185,816 was duly and legally issued to
`
`Russell T. Davis as the inventor thereof. A true and correct copy of the ‘816 Patent, which is
`
`entitled “Combining Reusable Data Markup Language”, is attached hereto as Exhibit E.
`
`33.
`
`Upon information and belief, Mattress Firm infringed the ‘816 Patent in violation
`
`of 35 U.S.C. § 271(a) by using the patented invention to, inter alia, prepare and file multiple
`
`XBRL-compliant filings. This includes practicing the method set forth in claim 1 of the ‘816
`
`patent; using a system as claimed in claim 10 of the ‘816 patent; using a computer readable
`
`medium as set forth in claim 17 of the ‘816 patent; using a system as set forth in claim 26 of the
`
`‘816 patent, and practicing a method as claimed in claim 27 of the ‘816 patent. An Infringement
`
`Chart detailing the infringement by Mattress Firm of Claims 1, 10, 17, 26 and 27 of the ‘816
`
`Patent is attached hereto as Exhibit F.
`
`6
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 7 of 12 PageID #: 836
`
`34.
`
`Upon information and belief, defendant Merrill Communications and Merrill
`
`Corporation have directly infringed the ‘816 patent by making, using, selling or offering to sell
`
`the Merrill Bridge product to its customers and prospective customers. Use of the Merrill Bridge
`
`product by, for example, Mattress Firm, is demonstrated in the chart set forth in Exhibit F.
`
`35.
`
`Defendants Merrill Corporation and Merrill Communications have infringed the
`
`‘816 patent by inducing others to engage in direct infringement under 35 U.S.C. § 271(a) with
`
`knowledge and an intent to induce the specific acts and to cause infringement.
`
`36. Mattress Firm was aware of the ‘816 patent at least as early as August 18, 2016,
`
`by virtue of a letter sent from William Diefenderfer, ESI’s Vice-Chairman & Co-Founder, to Ms.
`
`Kindel L. Elam, the General Counsel of Mattress Firm Holdings.
`
`37.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communication have had knowledge of the ‘816 patent on or about August 18, 2016 when
`
`Defendant Mattress Firm requested indemnification from Merrill Corporation and/or Merrill
`
`Communications.
`
`38.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communications, Inc. have contributed to infringement under 356 U.S.C. §271(c) by selling
`
`within the United States components used by its customers to infringe the ‘816 patent knowing
`
`that these components (a) are especially made for use in infringing products, and (b) are not a
`
`staple articles of commerce suitable for substantial non-infringing use.
`
`39.
`
`Upon information and belief, Mattress Firm’s infringement has been and
`
`continues to be willful.
`
`40.
`
`Upon information and belief, Merrill Corporation’s and Merrill Communication’s
`
`infringement has been and continues to be willful.
`
`7
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 8 of 12 PageID #: 837
`
`41.
`
`Plaintiffs are entitled to recover damages as a result of Defendant Mattress
`
`Firm’s, Merrill Corporation, and Merrill Communications acts of infringement of the ‘816 Patent
`
`with damages in amounts subject to proof at trial.
`
`COUNT III: INFRINGEMENT OF THE ‘383 PATENT
`
`42.
`
`Plaintiffs re-allege and incorporate by reference the prior paragraphs 1 through 19
`
`of this Complaint, as if fully set forth herein.
`
`43.
`
`On February 16, 2016, U.S. Patent No. 9,262,383 was duly and legally issued to
`
`Russell T. Davis as the inventor thereof. A true and correct copy of the ‘383 Patent, which is
`
`entitled “System, Method, And Computer Program Product For Processing A Markup
`
`Document”, is attached hereto as Exhibit G.
`
`44.
`
`Upon information and belief, Mattress Firm infringed the ‘383 Patent in violation
`
`of 35 U.S.C. § 271(a) by using the patented invention to, inter alia, prepare and file multiple
`
`XBRL-compliant filings. This includes using a computer readable medium as claimed in claim1
`
`of the ‘383 patent; practicing the method set forth in claim 17 of the ‘383 patent; and using an
`
`apparatus as claimed in claim 18 of the ‘383 patent. An Infringement Chart detailing the
`
`infringement by Mattress Firm of Claims 1, 17 and 18 of the ‘383 Patent is attached hereto as
`
`Exhibit H.
`
`45.
`
`Upon information and belief, defendant Merrill Communications and Merrill
`
`Corporation have directly infringed the ‘383 patent by making, using, selling or offering to sell
`
`the Merrill Bridge product to its customers and prospective customers. Use of the Merrill Bridge
`
`product by, for example, Mattress Firm, is demonstrated in the chart set forth in Exhibit H.
`
`46.
`
`Defendants Merrill Corporation and Merrill Communications have infringed the
`
`‘383 patent by inducing others to engage in direct infringement under 35 U.S.C. § 271(a) with
`
`8
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 9 of 12 PageID #: 838
`
`knowledge and an intent to induce the specific acts and to cause infringement.
`
`47. Mattress Firm was aware of the ‘383 patent at least as early as August 18, 2016,
`
`by virtue of a letter sent from William Diefenderfer, ESI’s Vice-Chairman & Co-Founder, to Ms.
`
`Kindel L. Elam, the General Counsel of Mattress Firm Holdings.
`
`48.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communication have had knowledge of the ‘383 patent on or about August 18, 2016 when
`
`Defendant Mattress Firm requested indemnification from Merrill Corporation and/or Merrill
`
`Communications.
`
`49.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communications, Inc. have contributed to infringement under 356 U.S.C. §271(c) by selling
`
`within the United States components used by its customers to infringe the ‘383 patent knowing
`
`that these components (a) are especially made for use in infringing products, and (b) are not a
`
`staple articles of commerce suitable for substantial non-infringing use.
`
`50.
`
`Upon information and belief, Mattress Firm’s infringement has been and
`
`continues to be willful.
`
`51.
`
`Upon information and belief, Merrill Corporation’s and Merrill Communications’
`
`infringement has been and continues to be willful.
`
`52.
`
`Plaintiffs are entitled to recover damages as a result of Defendant Mattress Firm’s
`
`acts of infringement of the ‘383 Patent with damages in amounts subject to proof at trial.
`
`COUNT IV: INFRINGEMENT OF THE ‘748 PATENT
`
`53.
`
`Plaintiffs re-allege and incorporate by reference the prior paragraphs 1 through 19
`
`of this Complaint, as if fully set forth herein.
`
`54.
`
`On February 23, 2016, U.S. Patent No. 9,268,748 was duly and legally issued to
`
`9
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 10 of 12 PageID #: 839
`
`Russell T. Davis as the inventor thereof. A true and correct copy of the ‘748 Patent, which is
`
`entitled “System, Method, And Computer Program Product For Outputting Markup Language
`
`Documents”, is attached hereto as Exhibit I.
`
`55.
`
`Upon information and belief, Mattress Firm infringed the ‘748 Patent in violation
`
`of 35 U.S.C. § 271(a) by using the patented invention to, inter alia, prepare and file multiple
`
`XBRL-compliant filings. This includes using an apparatus as claimed in claim 1 of the ‘748
`
`patent; using a computer readable medium as claimed in claim 11 of the ‘748 patent; and
`
`practicing the method set forth in claim 19 of the ‘748 patent. An Infringement Chart detailing
`
`the infringement by Mattress Firm of Claims 1, 11 and 19 of the ‘748 Patent is attached hereto as
`
`Exhibit J.
`
`56.
`
`Upon information and belief, defendant Merrill Communications and Merrill
`
`Corporation have directly infringed the ‘748 patent by making, using, selling or offering to sell
`
`the Merrill Bridge product to its customers and prospective customers. Use of the Merrill Bridge
`
`product by, for example, Mattress Firm, is demonstrated in the chart set forth in Exhibit J.
`
`57.
`
`Defendants Merrill Corporation and Merrill Communications have infringed the
`
`‘748 patent by inducing others to engage in direct infringement under 35 U.S.C. § 271(a) with
`
`knowledge and an intent to induce the specific acts and to cause infringement.
`
`58. Mattress Firm was aware of the ‘748 patent at least as early as August 18, 2016,
`
`by virtue of a letter sent from William Diefenderfer, ESI’s Vice-Chairman & Co-Founder, to Ms.
`
`Kindel L. Elam, the General Counsel of Mattress Firm Holdings.
`
`59.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communication have had knowledge of the ‘748 patent on or about August 18, 2016 when
`
`Defendant Mattress Firm requested indemnification from Merrill Corporation and/or Merrill
`
`10
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 11 of 12 PageID #: 840
`
`Communications.
`
`60.
`
`Upon information and belief, Defendants Merrill Corporation and Merrill
`
`Communications, Inc. have contributed to infringement under 356 U.S.C. §271(c) by selling
`
`within the United States components used by its customers to infringe the ‘355 patent knowing
`
`that these components (a) are especially made for use in infringing products, and (b) are not a
`
`staple articles of commerce suitable for substantial non-infringing use.
`
`61.
`
`Upon information and belief, Mattress Firm’s infringement has been and
`
`continues to be willful.
`
`62.
`
`Upon information and belief, Merrill Corporation’s and Merrill Communication’s
`
`infringement has been and continues to be willful.
`
`63.
`
`Plaintiffs are entitled to recover damages as a result of Defendant Mattress
`
`Firm’s, Merrill Corporation’s and Merrill Communications’ acts of infringement of the ‘748
`
`Patent with damages in amounts subject to proof at trial.
`
`PRAYER AND RELIEF
`
`WHEREFORE, Plaintiffs pray for judgment against Defendant Mattress Firm, Merrill
`
`Corporation and Merrill Communications for the following relief:
`
`A.
`
`For judgment in favor of Plaintiffs that, either literally or under the doctrine of
`
`equivalents, the Defendants have infringed one or more claims of the ‘355, ‘816, ‘383, and ‘748
`
`patents;
`
`B.
`
`For an award of damages, requiring Defendant Mattress Firm, Merrill Corporation
`
`and Merrill Communications to pay Plaintiffs their damages adequate to compensate them for
`
`the infringement of the ‘355, ‘816, ‘383, and ‘748 patents together with costs, expenses and
`
`prejudgment and post-judgment interest, for Defendants’ infringement of the ‘355, ‘816, ‘383,
`
`and ‘748 patents as provided under 35 U.S.C. § 284;
`
`11
`
`

`

`Case 1:17-cv-00933-RGA Document 13 Filed 09/18/17 Page 12 of 12 PageID #: 841
`
`C.
`
`For an injunction ordering Mattress Firm, Merrill Corporation and Merrill
`
`Communications to cease infringement of ‘355, ‘816, ‘383, and ‘748 patents pursuant to 35
`
`U.S.C. § 283;
`
`D.
`
`E.
`
`For treble damages pursuant to 35 U.S.C. § 284;
`
`For a judgment and Order granting Plaintiffs their reasonable attorneys’ fees
`
`under 35 U.S.C. § 285; and
`
`F.
`
`
`
`For such other and further relief as the Court may deem just and proper.
`
`JURY DEMAND
`
`Plaintiffs demand a trial by jury of all issues properly triable by jury in this action.
`
`
`
`Dated: September 18, 2017
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`O’KELLY ERNST & JOYCE, LLC
`
`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly (No. 4349)
`Daniel P. Murray (No. 5785)
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oelegal.com
`dmurray@oelegal.com
`
`and
`
`O’ROURKE LAW OFFICE, LLC
`Gerard M. O'Rourke (#3265)
`1201 N. Orange Street
`Suite 7260
`Wilmington, DE 19801-1186
`(484) 770-8046
`gorourke@orourkefirm.com
`
`Attorneys for Plaintiffs
`e-Numerate Solutions, Inc. and
`e-Numerate LLC
`
`12
`
`