Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 1 of 7
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`PAICE LLC,
`
`v.
`
`Plaintiff,
`
`TOYOTA MOTOR CORPORATION, a
`Japanese Corporation, TOYOTA MOTOR
`NORTH AMERICA, INC., and TOYOTA
`MOTOR SALES, U.S.A., INC.,
`
`Defendants.
`
`Case No.: 2:07-cv-180-DF
`
` JURY TRIAL DEMANDED
`
`FIRST AMENDED COMPLAINT
`
`Plaintiff Paice LLC, by and through the undersigned attorneys, hereby files this First
`
`Amended Complaint against Toyota Motor Corporation, Toyota Motor North America, Inc., and
`
`Toyota Motor Sales, U.S.A., Inc., requesting damages and other relief based upon its personal
`
`knowledge as to its own facts and circumstances, and based upon information and belief as to the
`
`acts and circumstances of others.
`
`PARTIES
`
`1.
`
`Plaintiff LLC (“Paice”) is a Delaware limited liability company having its
`
`principal place of business at 22957 Shady Knoll Drive, Bonita Springs, FL 34135.
`
`2.
`
`Upon information and belief, Defendant Toyota Motor Corporation (“TMC”) is a
`
`Japanese Corporation having its principal place of business at 1 Toyota-Cho, Toyota City, Aichi
`
`Prefecture 471-8571, Japan.
`
`1
`
`PAICE 2008
`BMW v. Paice
`IPR2020-01386
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`PAICE LLC,
`
`v.
`
`Plaintiff,
`
`TOYOTA MOTOR CORPORATION, a
`Japanese Corporation, TOYOTA MOTOR
`NORTH AMERICA, INC., and TOYOTA
`MOTOR SALES, U.S.A., INC.,
`
`Defendants.
`
`Case No.: 2:07-cv-180-DF
`
` JURY TRIAL DEMANDED
`
`FIRST AMENDED COMPLAINT
`
`Plaintiff Paice LLC, by and through the undersigned attorneys, hereby files this First
`
`Amended Complaint against Toyota Motor Corporation, Toyota Motor North America, Inc., and
`
`Toyota Motor Sales, U.S.A., Inc., requesting damages and other relief based upon its personal
`
`knowledge as to its own facts and circumstances, and based upon information and belief as to the
`
`acts and circumstances of others.
`
`PARTIES
`
`1.
`
`Plaintiff LLC (“Paice”) is a Delaware limited liability company having its
`
`principal place of business at 22957 Shady Knoll Drive, Bonita Springs, FL 34135.
`
`2.
`
`Upon information and belief, Defendant Toyota Motor Corporation (“TMC”) is a
`
`Japanese Corporation having its principal place of business at 1 Toyota-Cho, Toyota City, Aichi
`
`Prefecture 471-8571, Japan.
`
`1
`
`PAICE 2008
`BMW v. Paice
`IPR2020-01386
`
`
`
`Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 2 of 7
`
`3.
`
`Upon information and belief, Defendant Toyota Motor North America, Inc.
`
`(“Toyota NA”) is a Delaware corporation having its principal place of business at 9 West 57th
`
`Street, Suite 4900, New York, NY 10019. Upon further information and belief, Toyota NA is a
`
`wholly-owned subsidiary of TMC and is the holding company for TMC’s United States sales and
`
`manufacturing companies.
`
`4.
`
`Upon information and belief, Defendant Toyota Motor Sales, U.S.A., Inc.
`
`(“Toyota USA”) is a Delaware corporation having its principal place of business at 19001 S.
`
`Western Avenue, Torrance, CA 90509. Upon further information and belief, Toyota USA is
`
`TMC’s sales and marketing arm, overseeing TMC vehicle sales, service, and parts for the over
`
`1,200 Toyota dealerships located within the United States.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is an action for patent infringement arising under the patent laws of the
`
`United States, Title 35 of the United States Code. This Court has subject matter jurisdiction over
`
`this action under 28 U. S. C. §§ 1331 and 1338(a).
`
`6.
`
`This Court has personal jurisdiction over TMC, Toyota NA, and Toyota USA
`
`(collectively, “Toyota Defendants”) because, among other things, the Toyota Defendants have
`
`directly infringed, contributed to the infringement of, and actively induced infringement of
`
`Paice’s patents within this judicial district.
`
`7.
`
`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b) because the
`
`Toyota Defendants have committed acts of infringement in and are subject to personal
`
`jurisdiction in this judicial district.
`
`
`
`
`
`
`
`2
`
`
`
`Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 3 of 7
`
`FACTS
`
`8.
`
`Paice is the owner by assignment of all right, title, and interest in and to United
`
`States Letters Patent No. 5,343,970 (“the ’970 patent”), entitled “HYBRID ELECTRIC
`
`VEHICLE.” The ’970 patent was duly and legally issued by the United States Patent and
`
`Trademark Office on September 6, 1994.
`
`9.
`
`Paice is the owner by assignment of all right, title, and interest in and to United
`
`States Letters Patent No. 7,104,347 (“the ’347 patent”), entitled “HYBRID VEHICLES.” The
`
`’347 patent was duly and legally issued by the United States Patent and Trademark Office on
`
`September 12, 2006.
`
`10.
`
`Paice is the owner by assignment of all right, title, and interest in and to United
`
`States Letters Patent No. 7,237,634 (“the ’634 patent”), entitled “HYBRID VEHICLES.” The
`
`’634 patent was duly and legally issued by the United States Patent and Trademark Office on
`
`July 3, 2007.
`
`11.
`
`In December 2005, a jury in the jurisdiction found that the Toyota Defendants
`
`have been making, using, selling, offering for sale within the United States, or importing into the
`
`United States, hybrid vehicles that infringe the ’970 patent, including the Toyota Prius II, Toyota
`
`Highlander hybrid SUV and Lexus RX400h hybrid SUV.
`
`12.
`
`In August 2006, this Court entered final judgment that the Toyota Prius II, Toyota
`
`Highlander hybrid SUV and Lexus RX400h hybrid SUV infringe the ’970 patent.
`
`COUNT I: INFRINGEMENT OF UNITED STATES PATENT NO. 5,343,970
`
`13.
`
`14.
`
`Paice incorporates paragraphs 1-12 as if fully set forth herein.
`
`On information and belief, after the jury rendered its verdict in December 2005,
`
`Toyota began making, using, selling, offering for sale within the United States, or importing into
`
`
`
`3
`
`
`
`Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 4 of 7
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`the United States, a hybrid version of its Toyota Camry (“Toyota Camry hybrid”), the hybrid
`
`Lexus GS450h and the hybrid Lexus LS600h.
`
`15.
`
`The August 2006 Final Judgment was limited to each “infringing Prius II, Toyota
`
`Highlander, or Lexus RX400h.”
`
`16.
`
`On information and belief, the Toyota Camry hybrid, Lexus GS450h and Lexus
`
`LS600h are identical, in all respects relevant and material to the infringement of the ’970 patent,
`
`to at least one of the Toyota Prius II, Toyota Highlander hybrid SUV or Lexus RX400h hybrid
`
`SUV.
`
`17.
`
`By making, using, selling, offering for sale within the United States, and/or
`
`importing into the United States their hybrid vehicles, including but not limited to the Toyota
`
`Camry hybrid, Lexus GS450h, and Lexus LS600h, the Toyota Defendants are directly infringing
`
`the ’970 patent.
`
`18.
`
`By, among other things, distributing or offering for sale the Toyota Camry hybrid,
`
`Lexus GS450h and Lexus LS600h and manuals that teach third parties to operate the Toyota
`
`Camry hybrid, Lexus GS450h and Lexus LS600h in a manner that directly infringes the ’970
`
`patent, the Toyota Defendants have been and now are contributing to and actively inducing the
`
`infringement of the ’970 patent by others.
`
`19.
`
`The Toyota Defendants have actual knowledge of the ’970 patent and their
`
`infringement is willful.
`
`20.
`
`The Toyota Defendants’ past and continued acts of infringement have injured
`
`Paice, and thus Paice is entitled to recover damages adequate to compensate for that
`
`infringement.
`
`
`
`
`
`4
`
`
`
`Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 5 of 7
`
`COUNT II: INFRINGEMENT OF UNITED STATES PATENT NO. 7,104,347
`
`21.
`
`22.
`
`Paice incorporates paragraphs 1-20 as if fully set forth herein.
`
`By making, using, selling, offering for sale within the United States, and/or
`
`importing into the United States their hybrid vehicles, including but not limited to the Toyota
`
`Prius II, Highlander SUV, Lexus RX400h SUV, Toyota Camry hybrid, Lexus GS450h and
`
`Lexus LS600h, the Toyota Defendants are directly infringing the ’347 patent.
`
`23.
`
`By, among other things, distributing or offering for sale their hybrid vehicles and
`
`manuals that teach third parties to operate the hybrid vehicles in a manner that directly infringes
`
`the ’347 patent, the Toyota Defendants have been and now are contributing to and actively
`
`inducing the infringement of the ’347 patent by others.
`
`24.
`
`The Toyota Defendants have actual knowledge of the ’347 patent and their
`
`infringement is willful.
`
`25.
`
`The Toyota Defendants’ past and continued acts of infringement have injured
`
`Paice, and thus Paice is entitled to recover damages adequate to compensate for that
`
`infringement.
`
`COUNT III: INFRINGEMENT OF UNITED STATES PATENT NO. 7,237,634
`
`26.
`
`27.
`
`Paice incorporates paragraphs 1-25 as if fully set forth herein.
`
`By making, using, selling, offering for sale within the United States, and/or
`
`importing into the United States their hybrid vehicles, including but not limited to the Toyota
`
`Prius II, Highlander SUV, Lexus RX400h SUV, Toyota Camry hybrid, Lexus GS450h, and
`
`Lexus LS600h, the Toyota Defendants are directly infringing the ’634 patent.
`
`28.
`
`By, among other things, distributing or offering for sale their hybrid vehicles and
`
`manuals that teach third parties to operate the hybrid vehicles in a manner that directly infringes
`
`
`
`5
`
`
`
`Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 6 of 7
`
`the ’634 patent, the Toyota Defendants have been and now are contributing to and actively
`
`inducing the infringement of the ’634 patent by others.
`
`29.
`
`The Toyota Defendants have actual knowledge of the ’634 patent and their
`
`infringement is willful.
`
`30.
`
`The Toyota Defendants’ past and continued acts of infringement have injured
`
`Paice, and thus Paice is entitled to recover damages adequate to compensate for that
`
`infringement.
`
`PRAYER FOR RELIEF
`
`
`WHEREFORE, Plaintiff Paice LLC prays that this Court enter judgment:
`
`
`a) declaring that the Toyota Defendants’ hybrid vehicles, including but not
`limited to the Toyota Camry hybrid, Lexus GS450h and Lexus LS600h,
`infringe United States Patent No. 5,343,970;
`
`
`b) declaring that the Toyota Defendants’ hybrid vehicles, including but not
`limited to the Toyota Prius II, Highlander SUV, Lexus RX400h SUV, Toyota
`Camry hybrid, GS450h and LS600h, infringe United States Patent Nos.
`7,104,347 and 7,237,634;
`
`
`c) permanently enjoining the Toyota Defendants from infringing the ’970, ’347,
`and ’634 patents;
`
`
`d) awarding plaintiff damages resulting from the Toyota Defendants’
`infringement adequate to compensate for that infringement;
`
`
`e) awarding plaintiff treble damages from the Toyota Defendants’ willful
`infringement;
`
`
`f) declaring this to be an exceptional case under 35 U.S.C. § 285;
`
`g) awarding plaintiff’s costs in this action, together with reasonable attorneys’
`fees and pre-judgment and post-judgment interest; and
`
`
`h) granting plaintiff such other relief as this Court deems just and proper.
`
`Paice respectfully demands trial by jury.
`
`
`
`6
`
`
`
`Case 2:07-cv-00180-DF Document 6 Filed 07/03/2007 Page 7 of 7
`
`
`
`
`
`Dated: July 3, 2007
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Sam Baxter
`Samuel F. Baxter (Bar No. 01938000)
`McKOOL SMITH P.C.
`505 E. Travis St., Suite 105
`P.O. Box O
`Marshall, TX 75670
`(903) 927-2111 (phone)
`(903) 927-2622 (facsimile)
`
`Of Counsel:
`
`Ruffin B. Cordell (Bar No. 04820550)
`Ahmed J. Davis
`Scott A. Elengold
`FISH & RICHARDSON P.C.
`1425 K Street, N.W., 11th Floor
`Washington, DC 20005
`(202) 783-5070 (phone)
`(202) 783-2331 (facsimile)
`
`Robert E. Hillman
`FISH & RICHARDSON P.C.
`225 Franklin Street
`Boston, MA 02110
`(617) 542-5070 (phone)
`(617) 542-8906 (facsimile)
`
`
`
`Attorneys for Plaintiff
`PAICE LLC
`
`7
`
`
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