IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`LOGANTREE LP,
`
`v.
`
`MISFIT, INC.,
`
`Plaintiff,
`
`Defendant.
`
`C.A. No. _______________
`
`DEMAND FOR JURY TRIAL
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`Plaintiff LoganTree LP (“Plaintiff” or “LoganTree”), for its Original Complaint against
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`Defendant Misfit, Inc. (“Defendant” or “Misfit”) for infringement of U.S. Patent No. 6,059,576
`
`(“the ‘576 Patent”), as reexamined, under 35 U.S.C. § 271, et seq., alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff LoganTree LP is a partnership organized under the laws of the state of
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`Nevada. LoganTree’s sole general partner is Gulfstream Ventures, LLC (“Gulfstream”), a limited
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`liability company organized under the laws of the state of Nevada. Theodore and Anne Brann are
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`the owners and sole managing members of Gulfstream, and their address is P.O. Box 2345, Boerne,
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`Texas 78006.
`
`2.
`
`Defendant Misfit, Inc., is a corporation organized and existing under the laws of
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`the State of Delaware, with its principal place of business in the State of California and located at
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`839 Mitten Road, Suite 100, Burlingame, 94010. Misfit may be served through its registered
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`agent, the Corporation Trust Company, located at 1209 Orange Street, Wilmington, Delaware
`
`19801.
`
`1
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`APPLE 1035
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`

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`JURISDICTION AND VENUE
`
`3.
`
`This is an action for patent infringement arising under the patent laws of the United
`
`States, Title 35, United States Code. This Court has subject matter jurisdiction over this action
`
`under 28 U.S.C. §§ 1331 and 1338(a).
`
`4.
`
`This Court has general personal jurisdiction over Misfit because Misfit is organized
`
`and existing under the laws of the State of Delaware.
`
`5.
`
`Venue is proper in the District of Delaware under 28 U.S.C. § 1400(b) because
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`Misfit is incorporated in the State of Delaware and the District of Delaware is the sole judicial
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`district within the State of Delaware. See TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
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`137 S. Ct. 11514 (2017) (holding that, “[a]s applied to domestic corporations, ‘reside[nce]’ in
`
`§ 1400(b) refers only to the State of incorporation”).
`
`THE PATENT-IN-SUIT
`
`6.
`
`On May 9, 2000, the United States Patent and Trademark Office (“PTO”) duly and
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`lawfully issued the ‘576 Patent, entitled “Training and Safety Device, System and Method to Aid
`
`in Proper Movement During Physical Activity,” after a full and fair examination. A true and
`
`correct copy of the ‘576 Patent is attached hereto as Exhibit A.
`
`7.
`
`On March 17, 2015, following a reexamination requested by LoganTree, the PTO
`
`issued a reexamination certificate for the ‘576 Patent, bearing U.S. Patent No. 6,059,576 C1 (“the
`
`‘576 Reexamination Certificate”). A true and correct copy of the ‘576 Reexamination Certificate
`
`is attached hereto as Exhibit B. The ‘576 Patent as reexamined is referred to as the “Reexamined
`
`‘576 Patent.”
`
`8.
`
`The named inventor of the ‘576 Patent is Theodore L. Brann.
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`2
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`

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`9.
`
`Mr. Brann assigned all right, title, and interest in the ‘576 Patent to LoganTree.
`
`LoganTree possess all rights of recovery under the ‘576 Patent and the Reexamined ‘576 Patent,
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`including the exclusive right to sue for infringement and recover past damages.
`
`THE REEXAMINATION
`
`10.
`
`The ‘576 Patent sets forth three independent claims – one each for the device,
`
`system, and method of the invention described above – along with twenty-six dependent claims.
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`(Id. at 17-18). On March 17, 2015, following a reexamination requested by LoganTree, the PTO
`
`issued a reexamination certificate for the ‘576 Patent (“the ‘576 Reexamination Certificate”)
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`reaffirming the patentability of all of the ‘576 Patent claims, as amended, and further determining
`
`that an additional 156 dependent claims are patentable, for a total of 185 patented claims. (Ex. B).
`
`Claims 1, 13, and 20 of the Reexamined ‘576 Patent are independent claims, and the remaining
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`182 claims are dependent on Claims 1, 13, or 20.
`
`11.
`
`As stated in Claim No. 1 of ‘576 Reexamination Certificate, the patented “device”
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`provides for:
`
`a portable, self-contained device for monitoring movement of body parts during
`physical activity, said device comprising:
`
`a movement sensor capable of measuring data associated with unrestrained
`movement in any direction and generating signals indicative of said movement;
`
`a power source;
`
`a microprocessor connected to said movement sensor and to said power source, said
`microprocessor capable of receiving, interpreting, storing and responding to said
`movement data based on user-defined operational parameters, detecting a first
`user-defined event based on the movement data and at least one of the user-defined
`operational parameters regarding the movement data, and storing first event
`information related to the selected first user-defined event along with the first time
`stamp information reflecting a time at which the movement data causing the first
`user-defined event occurred;
`
`at least one user input connected to said microprocessor for controlling the
`operation of said device;
`
`3
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`

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`a real-time clock connected to said microprocessor;
`
`memory for storing said movement data; and
`
`an output indictor connected to said microprocessor for signaling the occurrence of
`user-defined events;
`
`wherein said movement sensor measures the angle and velocity of said movement.
`
`(Id. at 3).1
`
`12.
`
`Claim 13 (the “System Claim”) defines the patented “system” to comprise the
`
`Claim 1 device when connected via a “download device” to “a computer running a program
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`capable of interpreting” the data gathered by the Claim 1 device.
`
`13.
`
`Claim 13 of the Reexamined ‘576 Patent is for: “A system to aid in training and
`
`safety during physical activity, said system comprising:
`
`a portable, self-contained movement measuring device, said movement measuring
`device further comprising:
`
`a movement sensor capable of measuring data associated with unrestrained
`movement in any direction and generating signals indicative of said movement;
`
`a power source;
`
`a microprocessor connected to said movement sensor and to said power source, said
`microprocessor capable of receiving, interpreting, storing and responding to said
`movement data based on user-defined operational parameters, detecting a first user-
`defined event based on the movement data and at least one of the user-defined
`operational parameters regarding the movement data, and storing first event
`information related to the selected first user-defined event along with the first time
`stamp information reflecting a time at which the movement data causing the first
`user-defined event occurred;
`
`at least one user input connected to said microprocessor for controlling the
`operation of said device;
`
`a real-time clock connected to said microprocessor; memory for storing said
`movement data; and
`
`1 The text in italics “indicates additions made to the patent” as a result of the reexamination. (Id.
`at 3).
`
`4
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`

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`at least one input/output port connected to said microprocessor for downloading
`said data and uploading said operational parameters;
`
`an output indicator connected to said microprocessor;
`
`a computer running program capable of interpreting and reporting said movement
`data based on said operational parameters; and
`
`a download device electronically connected to said movement measuring device
`and said computer for transmitting said movement data and operational parameters
`between said movement measuring device and said computer for analysis, reporting
`and operating purposes;
`
`wherein said movement sensor measures the angle and velocity of said movement.
`
`14.
`
`Claim 20 (the “Method Claim”) provides a parallel definition for the patented
`
`“method.”
`
`15.
`
`Claim 20 is for: “A method to monitor physical movement of a body part
`
`comprising the steps of:
`
`attaching a portable, self-contained movement measuring device to said body part
`for measuring unrestrained movement in any direction;
`
`measuring data associated with said physical movement; interpreting, using a
`microprocessor included in the portable, self-contained measuring device, said
`physical movement data based on user-defined operational parameters and a real-
`time clock; [and]
`
`storing said data in memory;
`
`detecting, using the microprocessor, a first user-defined event based on the
`movement data and at least one of the user-defined operational parameters
`regarding the movement data; and
`
`storing, in said memory, first event information related to the detected first user-
`defined event along with first time stamp information reflecting a time at which the
`movement data causing the first user-defined event occurred.
`
`COUNT I
`(Infringement of the Reexamined ‘576 Patent)
`
`16.
`
`Plaintiff realleges paragraphs 1 through 15 herein.
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`5
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`

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`17.
`
`On information and belief, Misfit, directly or through intermediaries, makes, made,
`
`has made, used, imported, manufactured, provided, supplied, distributed, sold, and/or offered for
`
`sale to customers within the United States accelerometer-based activity monitoring devices that
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`infringe the Reexamined ‘576 Patent either literally and/or under the doctrine of equivalents,
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`including but not limited to the following models of wearable accelerometer-based activity
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`trackers or smartwatches (collectively “Accused Products”): Misfit Shine 2, Misfit Ray, Misfit
`
`Flare, Misfit Swarovsky Activity Crystal, Misfit Vapor Smartwatch, Misfit Command Hybrid
`
`Smartwatch, Misfit Path Hybrid Smartwatch, and Misfit Phase Hybrid Smartwatch.
`
`18.
`
`Third parties, including Defendant’s customers, have directly infringed, and
`
`continue to directly infringe under 35 U.S.C. § 271(a), one or more claims of the ‘576 Patent,
`
`either literally and/or under the doctrine of equivalents, by making, using, selling, and/or offering
`
`for sale the Accused Products in the United States that infringe one or more claims of the ‘576
`
`Patent.
`
`19.
`
`Defendant has had prior knowledge and notice of the ‘576 Patent and its
`
`infringement through prior correspondence from counsel of LoganTree to Defendant and its
`
`General Counsel as discussed below.
`
`20.
`
`Defendant has induced infringement under 35 U.S.C. § 271(b). Defendant has
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`actively, knowingly, and intentionally induced, infringement of the ‘576 Patent by selling or
`
`otherwise supplying the Accused Products with the knowledge and intent that third parties will
`
`use, sell, and/or offer for sale in the United States, for their intended purpose to infringe the ‘576
`
`Patent, and with the knowledge and intent to encourage and facilitate infringement through the
`
`dissemination of the Accused Products and/or the creation and dissemination of documentation
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`6
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`

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`and technical information to customers and prospective customers related to the Accused Products,
`
`as well actively providing the Misfit app for use by customers with the Accused Products.
`
`21.
`
`Defendant has contributed to the infringement by third parties, including its
`
`customers, of one or more claims of the ‘576 Patent under 35 U.S.C. § 271(c), by selling and/or
`
`offering for sale in the United States knowing that those products constitute a material part of the
`
`inventions of the ‘576 Patent, knowing that those products are especially made or adapted to
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`infringe the ’576 Patent, and knowing that those products are not staple articles of commerce
`
`suitable for substantial non-infringing use.
`
`22.
`
`On information and belief, the Accused Products infringe the Reexamined ‘576
`
`Patent because each of the accused products is a portable, self-contained device that uses a sensor
`
`(e.g., an accelerometer and/or gyroscope) to measure the angle and velocity of body movements,
`
`a microprocessor capable of recognizing and interpreting data generated by the accelerometer and
`
`making detections based on said interpretation, and internal memory and a clock for storing the
`
`data along with the time at which the detected events occurred.
`
`23.
`
`On information and belief, the Accused Products infringe the Device Claim of the
`
`Reexamined ‘576 Patent, and other claims dependent on the Device Claim, in that each of the
`
`Accused Products:
`
`a.
`
`Is a portable, self-contained device for monitoring body movements during
`
`physical activity (e.g., each is a smartwatch for automatically tracking, for
`
`example, steps and a distance traveled);
`
`b.
`
`Contains a movement sensor (e.g., a 3-axis accelerometer or gyroscope, or
`
`combination thereof) capable of measuring data associated with body
`
`movements and generating signals indicative of such movements, and
`
`7
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`

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`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`which measures the angle and velocity of such movements (e.g., 3-axis
`
`accelerometer automatically tracks a user’s activity);
`
`Contains a power source (e.g., a replaceable CR2430 coin cell battery);
`
`Contains a microprocessor connected to the movement sensor and power
`
`source (e.g., a Qualcomm® Snapdragon WearTM 2100 processor or an
`
`Apollo, an ARM Cortex M4 device) capable of receiving, interpreting,
`
`storing, and responding to movement data generated by the sensor based on
`
`user-defined operational parameters (e.g., step goals), and detecting a first
`
`user-defined event based on the movement data and at least one of the user-
`
`defined operational parameters regarding the movement data (e.g., tracks
`
`steps taken, distance traveled and provides indication of activity progress
`
`from 0 to 100%, vibrates, or LED light up after goal reached), and storing
`
`first event information related to the selected first user-defined event along
`
`with the first time stamp information reflecting a time at which the
`
`movement data causing the first user-defined event occurred (e.g., data can
`
`be stored for 14 days between syncs and activity history can be seen in the
`
`daily, weekly and monthly views);
`
`Contains user inputs (e.g., touch screen, buttons, etc.) connected to the
`
`microprocessor for controlling the device;
`
`Contains a real-time clock and memory for storing movement data; and
`
`Includes an output indicator connected to said microprocessor for signaling
`
`the occurrence of user-defined events (e.g., a subeye showing activity
`
`progress at 100%, vibration, or an LED light up and/or stating “GOAL!”).
`
`8
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`

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`24.
`
`As reflected in the chart attached hereto as Exhibit C, the information Misfit makes
`
`public about the Accused Products further demonstrates how they infringe the Device Claim of
`
`the Reexamined ‘576 Patent. (Ex. C). While Exhibit C demonstrates the element-by-element
`
`infringement of one or more Accused Products, on information and belief, all of Misfit’s Accused
`
`Products incorporate equivalent body motion-tracking technology and design, and all infringe the
`
`Device Claim of the Reexamined ‘576 Patent.
`
`25.
`
`On information and belief, each of the Accused Products is designed to be and is
`
`cable of being connected to an external computer (such as a laptop or smart phone) and/or
`
`computer network operating software capable of accessing and downloading stored data from the
`
`Accused Products, analyzing that data, and presenting the data to the user in different forms. When
`
`so connected, each of the Accused Products infringes the System Claim of the Reexamined ‘576
`
`Patent, and other claims dependent on the System Claim, in that the Accused product so connected:
`
`a.
`
`b.
`
`c.
`
`Is a system to aid in training and safety during physical activity;
`
`Contains a portable, self-contained movement measuring device of the kind
`
`described in Paragraph 12, supra (e.g., the Accused Product itself);
`
`Contains a computer (e.g., a personal computer or smart phone) running a
`
`program capable of interpreting and reporting movement data collected by
`
`the device; and
`
`d.
`
`Contains a download device (e.g., cord, USB dongle, Bluetooth transmitter,
`
`etc.) electronically connected to the movement measuring device and the
`
`computer for transmitting data between the movement device and the
`
`computer for analysis.
`
`9
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`

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`26.
`
`On information and belief, when used as intended and instructed by Misfit, each of
`
`the Accused Products infringes the Method Claim of the Reexamined ‘576 Patent, and other claims
`
`dependent on the Method Claim, in that the Accused Product, so used:
`
`a.
`
`Is a method to monitor physical movement of a body part comprising the
`
`steps of:
`
`i. Attaching a portable, self-contained movement measuring device
`
`(e.g., the Accused Product itself) to said body part for measuring
`
`unrestrained movement in any direction;
`
`ii. Measuring data associated with physical movement of the body part
`
`(using the sensor described above);
`
`iii.
`
`Interpreting said data using a microprocessor contained in the self-
`
`contained movement measuring device based on user-defined
`
`parameters and a real-time clock;
`
`iv. Storing said data in memory;
`
`v. Detecting, using the microprocessor, a first user-defined event based
`
`on the movement data and at least one of the user-defined
`
`operational parameters regarding the movement data; and
`
`vi. Storing, in said memory, first event information related to the
`
`detected first user-defined event along with first time stamp
`
`information reflecting a time at which the movement data causing
`
`the first user-defined event occurred.
`
`27.
`
`The infringing actions of Misfit are and have at all times been without the consent
`
`of, authority of, or license from Plaintiff.
`
`10
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`28.
`
`As a direct and proximate result of the infringement of the Reexamined ‘576 Patent
`
`by Misfit, Plaintiff has suffered damages in an amount that cannot yet be fully ascertained, which
`
`will be proven at trial.
`
`PLAINTIFF’S ATTEMPTS TO CONTACT DEFENDANT
`
`29.
`
`On July 7, 2017, Plaintiff’s attorneys sent a letter by mail with a Certified Mail
`
`Return Receipt Requested (CMRRR) addressed to the General Counsel of Defendant Misfit, Inc.
`
`LoganTree’s letter informed the General Counsel and Misfit Inc. that it had products that infringe
`
`at least claim 1 of the ‘576 Patent. LoganTree in its letter indicated the hope of resolving the
`
`matter amicably requested a discussion of extending a non-exclusive license or cessation within
`
`fourteen (14) days. While LoganTree’s attorneys received a returned CMRRR Card signed and
`
`dated, to LoganTree’s knowledge, a written response was not received.
`
`30.
`
`Having had prior knowledge of the ‘576 Patent, Defendant knew or should have
`
`known that, without taking a license to the patents-in-suit, its actions continued to infringe one or
`
`more claims of the ‘576 Patent. Therefore, Defendant has willfully infringed the ‘576 Patent.
`
`31.
`
`The conduct of Defendant in infringing the ‘576 Patent renders this case
`
`exceptional within the meaning of 35 U.S.C. § 285.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff LoganTree requests that the Court grant the following relief:
`
`a)
`
`b)
`
`enter a judgment that Defendant has infringed the patent-in-suit;
`
`order Defendant to pay damages adequate to compensate Plaintiff for Defendant’s
`
`infringement of the patent-in-suit, such damages to be determined by a jury, together with pre-
`
`judgment and post-judgment interest;
`
`c)
`
`enter a judgment that the infringement was willful and that such damages be trebled
`
`pursuant to 35 U.S.C. § 284;
`
`11
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`

`

`d)
`
`enter a judgment that this case is exceptional under 35 U.S.C. § 285 and award
`
`Plaintiff’s reasonable attorneys’ fees, costs and expenses incurred in this action; and
`
`e)
`
`award such other and further relief, at law or in equity, as the Court deems just and
`
`proper.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff respectfully requests a trial by jury on all issues so triable, pursuant to Fed. R. Civ.
`
`P. 38(b).
`
`Dated: March 16, 2021
`
`CHIPMAN BROWN CICERO & COLE, LLP
`
`Of Counsel:
`
`Arnold Shokouhi
`Christopher M. Barkley
`James E. Sherry
`MCCATHERN, PLLC
`3710 Rawlins Street, Suite 1600
`Dallas, TX 75219
`(214) 443-4478
`arnolds@mccathernlaw.com
`cbarkley@mccathernlaw.com
`jsherry@mccathernlaw.com
`
` /s/ Gregory E. Stuhlman
`Gregory E. Stuhlman (#4765)
`Aidan T. Hamilton (#6729)
`Hercules Plaza
`1313 North Market Street, Suite 5400
`Wilmington, Delaware 19801
`(302) 295-0191
`stuhlman@chipmanbrown.com
`hamilton@chipmanbrown.com
`
`Attorneys for Plaintiff LoganTree LP
`
`12
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`