`
`1
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`PAICE 2007
`BMW v. Paice
`IPR2020-01386
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`
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`Case 2:04-cv-00211-DF Document 1 Filed 06/08/2004 Page 2 of 7
`Case 2:04-cv-00211-DF Document 1
`Filed 06/08/2004
`Page 2 of 7
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`3.
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`Defendant Toyota Motor North America, inc. (“Toyota NA”) is, upon
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`information and belief, a Delaware corporation having its principal place of business at 9 West
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`57th Street, Suite 4900, New York, NY 10019. Upon further information and belief, Toyota NA
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`is a wholly-owned subsidiary of TMC and is the holding company for TMC’s United States sales
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`and manufacturing companies.
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`4.
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`Defendant Toyota Motor Sales, U.S.A., Inc. (“Toyota USA”) is, upon information
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`and belief, a Delaware corporation having its principal place of business at 19001 S. Western
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`Avenue, Torrance, CA 90509. Upon further information and belief, Toyota USA is TMC’s
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`sales and marketing arm, overseeing TMC vehicle sales, service, and parts for the over 1,200
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`Toyota dealerships located within the United States.
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`JURISDICTION AND VENUE
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`5.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, Title 35 of the United States Code. This Court has subject matter jurisdiction over
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`this action under 28 U. S. C. §§ 1331 and 1338(a).
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`6.
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`This Court has personal jurisdiction over TMC, Toyota NA, and Toyota USA
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`(collectively, “Defendants”) because, among other things, Defendants have directly infringed,
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`contributed to the infringement of, and/or actively induced infringement of Paice’s patents within
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`this judicial district, as set forth herein.
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`7.
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`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b) because
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`Defendants have committed acts of infringement in and are subject to personal jurisdiction in this
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`judicial district.
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`Case 2:04-cv-00211-DF Document 1 Filed 06/08/2004 Page 3 of 7
`Case 2:04-cv-00211-DF Document 1
`Filed 06/08/2004
`Page 3 of 7
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`FACTS
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`8.
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`Paice is the owner by assignment of all right, title, and interest in and to United
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`States Letters Patent No. 5,343,970 (“the ”970 patent”) entitled “HYBRID ELECTRIC
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`VEHICLE.” The ”970 patent was duly and legally issued by the United States Patent and
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`Trademark Office on September 6, 1994.
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`9.
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`Paice is the owner by assignment of all right, title, and interest in and to United
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`States Letters Patent No. 6,209,672 (“the ”672 patent”) entitled “HYBRID VEHICLE.” The
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`”672 patent was duly and legally issued by the United States Patent and Trademark Office on
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`April 3, 2001.
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`10.
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`Paice is the owner by assignment of all right, title, and interest in and to United
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`States Letters Patent No. 6,554,088 (“the ”088 patent”) entitled “HYBRID VEHICLES.” The
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`”088 patent was duly and legally issued by the United States Patent and Trademark Office on
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`April 29, 2003.
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`COUNT I: INFRINGEMENT OF UNITED STATES PATENT NO. 5,343,970
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`11.
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`Paice incorporates paragraphs 1-10 as if fully set forth herein.
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`12.
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`Defendants have been and are now making, using, selling, offering for sale within
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`the United States, or importing into the United States, hybrid vehicles that infringe the ”970
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`patent.
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`l3.
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`Defendants have been and now are contributing to the infringement of and/or
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`actively inducing the infringement of the ”970 patent by others by, among other things,
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`distributing or offering for sale hybrid vehicles and manuals that teach third parties to operate
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`said hybrid vehicles in a manner that directly infringes the ”970 patent.
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`Case 2:04-cv-00211-DF Document 1 Filed 06/08/2004 Page 4 of 7
`Case 2:04-cv-00211-DF Document 1
`Filed 06/08/2004
`Page 4 of 7
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`14.
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`Defendants have had actual knowledge of the ’970 patent and their infringement
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`is willful.
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`15.
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`Defendants’ past and continued acts of infringement have injured Paice and thus
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`Paice is entitled to recover damages adequate to compensate for that infringement.
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`16.
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`Defendants’ acts of infringement have caused and will continue to cause
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`irreparable injury to Paice unless and until enjoined by this Court.
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`COUNT II: INFRINGEMENT OF UNITED STATES PATENT NO. 6,209,672
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`17.
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`Paice incorporates paragraphs 1—16 as if fully set forth herein.
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`18.
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`Defendants have been and are now making, using, selling, offering for sale Within
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`the United States, or importing into the United States, hybrid vehicles that infringe the ’672
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`patent.
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`19.
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`Defendants have been and now are contributing to the infringement of and/or
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`actively inducing the infringement of the ”672 patent by others by, among other things,
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`distributing or offering for sale hybrid vehicles and manuals that teach third parties to operate
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`said hybrid vehicles in a manner that directly infringes the ’672 patent.
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`20.
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`Defendants have had actual knowledge of the ”672 patent and their infringement
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`is willful.
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`21.
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`Defendants” past and continued acts of infringement have injured Paice and thus
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`Paice is entitled to recover damages adequate to compensate for that infringement.
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`22.
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`Defendants” acts of infringement have caused and will continue to cause
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`irreparable injury to Paice unless and until enjoined by this Court.
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`COUNT III: INFRINGEMENT OF UNITED STATES PATENT NO. 6,554,088
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`23.
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`Paice incorporates paragraphs 1—22 as if fully set forth herein.
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`
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`Case 2:04-cv-00211-DF Document 1 Filed 06/08/2004 Page 5 of 7
`Case 2:04-cv-00211-DF Document 1
`Filed 06/08/2004
`Page 5 of 7
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`24.
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`Defendants have been and are now making, using, selling, offering for sale within
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`the United States, or importing into the United States, hybrid vehicles that infringe the ’088
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`patent.
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`25.
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`Defendants have been and now are contributing to the infringement of and/or
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`actively inducing the infringement of the ’088 patent by others by, among other things,
`
`distributing or offering for sale hybrid vehicles and manuals that teach third parties to operate
`
`said hybrid vehicles in a manner that directly infringes the ’088 patent.
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`26.
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`Defendants have had actual knowledge of the ’088 patent and their infringement
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`is willful.
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`27.
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`Defendants’ past and continued acts of infringement have injured Paice and thus
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`Paice is entitled to recover damages adequate to compensate for that infringement.
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`28.
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`Defendants’ acts of infringement have caused and will continue to cause
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`irreparable injury to Paice unless and until enjoined by this Court.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff Paice LLC prays that this Court enter judgment:
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`a) declaring that Defendants have infringed United States Patent Nos. 5,343,970;
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`6,209,672; and 6,554,088;
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`b) preliminarily and permanently enjoining Defendants and their officers, agents,
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`employees, representatives, successors and assigns, and any others acting in
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`concert with them, from infringing United States Patent Nos. 5,343,970;
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`6,209,672; and 6,554,088;
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`0) awarding plaintiff Paice damages resulting from Defendants’ infringement
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`adequate to compensate for that infringement;
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`
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`Case 2:04-cv-00211-DF Document 1 Filed 06/08/2004 Page 6 of 7
`Case 2:04-cv-00211-DF Document 1
`Filed 06/08/2004
`Page 6 of 7
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`d) awarding plaintiff Paice treble damages as a result of Defendants’ willful
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`infringement;
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`e) declaring this to be an exceptional case within the meaning of 35 U.S.C.
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`§ 285;
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`f)
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`awarding plaintiff Paice its costs in this action, together with reasonable
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`attorney’s fees and pre—judgrnent and post-judgment interest; and
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`g) granting plaintiff Paice such other relief as this court deems just and proper.
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`Paice respectfully demands a trial by jury.
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`Dated: June 8,2004
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`Respectfully submitted,
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`By: 4%—
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`Samuel F. Baxter (Bar No. 01938000)
`McKOOL SMITH PC.
`
`505 East Travis Street, Suite 105
`Marshall, Texas 75670
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`(903) 927—21 1 1
`(903) 927—2622
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`Of counsel:
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`Ruffin B. Cordell (Bar No. 04820550)
`FISH & RICHARDSON PC.
`1425 K Street, N.W., 11th Floor
`Washington, DC 20005
`(202) 783-5070 (phone)
`(202) 783—2331 (facsimile)
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`Robert E. Hillman
`
`FISH & RICHARDSON PC.
`225 Franklin Street
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`Boston, MA 02110
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`(617) 542-5070 (phone)
`(617) 542-8906 (facsimile)
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`
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`Case 2:04-cv-00211-DF Document 1 Filed 06/08/2004 Page 7 of 7
`Case 2:04-cv-00211-DF Document 1
`Filed 06/08/2004
`Page 7 of 7
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`Andrew D. Hirsch, Esquir
`PAICE LLC
`-
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`6830 Elm Street
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`McLean, VA 22101
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`(703) 288-9471 (phone)
`(703) 288—9474 (facsimile)
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`Attorneys for Plaintiff
`PAICE LLC
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`