Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 1 of 18 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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` Civil Action No. 2:19-cv-00209
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`JURY TRIAL DEMANDED
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`THE HILLMAN GROUP, INC.,
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`KEYME, INC.,
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`Plaintiff,
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`v.
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`Defendant.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff The Hillman Group, Inc. (“Hillman”), files this complaint for patent infringement
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`against Defendant KeyMe, Inc. (“KeyMe”) under 35 U.S.C. § 271. Hillman hereby alleges as
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`follows:
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`PARTIES
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`1.
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`Plaintiff Hillman is a corporation organized and existing under the laws of
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`Delaware that maintains its principal place of business at 10590 Hamilton Avenue, Cincinnati,
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`Ohio 45231.
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`2.
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`Hillman is engaged in the business of providing a variety of products and services
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`for the retail industry, with a focus on the hardware and home improvement businesses. Hillman’s
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`products include a variety of key duplication machines, including its FastKey, Minute Key, and
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`KeyKrafter key duplication machines. Hillman deploys its key duplication machines in this
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`judicial district and throughout the United States.
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`On information and belief, Defendant KeyMe is a corporation organized and
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`3.
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`existing under the laws of Delaware that maintains its principal place of business at 247 West 36th
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`Street, Floor 2, New York, New York 10018.
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`4.
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`On information and belief, KeyMe provides self-service key duplication kiosks to
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`the retail industry and regularly conducts business throughout the United States, including within
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`this judicial district, by placing these kiosks in retail locations. On information and belief, KeyMe
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`derives revenue from the sale of the keys duplicated in the KeyMe kiosks to consumers.
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`JURISDICTION AND VENUE
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`5.
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`6.
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`This action arises under the patent laws of the United States, 35 U.S.C. §§ 100, et
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`seq., including 35 U.S.C. § 271, and this Court has jurisdiction over the subject matter of this
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`action under 28 U.S.C. §§ 1331 and 1338(a).
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`7.
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`This Court has personal jurisdiction over KeyMe because, on information and
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`belief, KeyMe purposely avails itself of the privilege of doing business in the Eastern District of
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`Texas and/or derives substantial revenue from goods and services provided to individuals in this
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`district, including via the deployment of KeyMe key duplication kiosks.
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`8.
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`On information and belief, KeyMe has deployed at least twenty of its infringing
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`KeyMe kiosks in this judicial district.
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`9.
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`Venue is proper in this judicial district under 28 U.S.C. §§ 1391 and/or 1400(b)
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`because, on information and belief, KeyMe has committed acts of patent infringement within the
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`Eastern District of Texas and has multiple regular and established places of business in this district
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`by way of its twenty or more key duplication kiosks in this district.
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 3 of 18 PageID #: 3
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`10. More than one hundred Hillman FastKey, Minute Key, and KeyKrafter key
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`duplication machines are deployed in the Eastern District of Texas.
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`11.
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`Hillman also maintains three manufacturing and distribution facilities located
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`within the Eastern District of Texas, totaling more than 368,000 square feet of commercial real
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`estate.
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`12.
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`13.
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`THE PATENTS-IN-SUIT
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`The U.S. Patent and Trademark Office (“PTO”) issued U.S. Patent No. 8,979,446
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`(“the ’446 patent”) on March 17, 2015, entitled “Fully Automatic Self-Service Key Duplicating
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`Kiosk.” The ’446 patent identifies Daniel Freeman as the inventor of the claimed subject matter.
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`A true and correct copy of the ’446 patent is attached hereto as Exhibit A.
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`14.
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`Hillman is the owner of the ’446 patent by virtue of assignment and has the right to
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`enforce it.
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`15.
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`The PTO issued U.S. Patent No. 9,914,179 (“the ’179 patent”) on March 13, 2018,
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`entitled “Self Service Key Duplicating Machine with Automatic Key Model Identification
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`System.” The ’179 patent identifies Daniel Freeman and Ari Freeman as the inventors of the
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`claimed subject matter. A true and correct copy of the ’179 patent is attached hereto as Exhibit B.
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`16.
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`Hillman is the owner of the ’179 patent by virtue of assignment and has the right to
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`enforce it.
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`17.
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`18.
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`THE INFRINGING PRODUCTS
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`On information and belief, KeyMe markets a self-service key duplicating kiosk that
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`it has introduced into interstate commerce under one or more trade names, including but not limited
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 4 of 18 PageID #: 4
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`to the “KeyMe” or “Locksmith in a Box” kiosks (collectively, “the Infringing Products”).
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`Attached
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`to
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`this Complaint as Exhibit C
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`is a printout of a KeyMe website
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`(https://blog.key.me/key-copying-kiosk-technology-update/; last visited May 31, 2019), showing
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`examples of the Infringing Products.
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`19.
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`On information and belief, KeyMe has marketed, sold, offered for sale, and/or
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`provided the Infringing Products to various retailers throughout the United States and this judicial
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`district, including but not limited to 7-Eleven, Bed Bath & Beyond, Rite Aid, Albertson’s, Kmart,
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`Safeway, Sears, Mall of America, Giant Eagle, Ralphs, Kroger, Vons, and Tom Thumb, and is
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`continuing to do so. Attached to this Complaint as Exhibit D is a printout of a KeyMe website
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`(https://www.key.me; last visited May 19, 2019) instructing consumers to “find us at these fine
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`retailers.”
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`20.
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`21.
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`KEYME’S INFRINGEMENT OF THE ’446 PATENT
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`KeyMe, via the Infringing Products, has infringed, infringes, and will infringe
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`multiple claims of the ’446 patent, including at least claim 22.
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`22.
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`The ’446 patent is directed generally to “self-service kiosk[s] for duplicating keys.”
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`See Exhibit A at col. 21, l. 10 – col. 30, l. 53.
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`23.
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`The ’446 patent was previously asserted against KeyMe by the former owner of the
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`’446 patent, Minute Key, Inc., in a litigation captioned Minute Key, Inc. v. KeyMe, Inc., Civil
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`Action No. 0:15-cv-01599-JNE-KMM, in the United States District Court for the District of
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`Minnesota (“the Minnesota Action”). KeyMe was served with the complaint in the Minnesota
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`Action on March 30, 2015. See Exhibit E (returned summons in the Minnesota Action indicating
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`service by Minute Key on KeyMe’s Delaware agent).
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 5 of 18 PageID #: 5
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`The parties to the Minnesota Action filed a stipulation of voluntary dismissal for
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`24.
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`all claims and defenses in the Minnesota Action on February 24, 2017. See Exhibit F (copy of
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`joint stipulation). The Minnesota court dismissed the Minnesota Action without prejudice on
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`March 2, 2017, in an order filed on the record on March 3, 2017. Exhibit G (copy of dismissal
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`order). No determination was made regarding the validity or enforceability of the ’446 patent, or
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`the infringement of any claim of the ’446 patent by KeyMe during the Minnesota Action.
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`25.
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`During the pendency of the Minnesota Action, Hillman filed an inter partes review
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`(“IPR”) petition with the PTO’s Patent Trial and Appeal Board (“PTAB”) seeking invalidation of
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`selected claims of the ’446 patent. The case was assigned control number IPR2015-01154.
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`Hillman’s petition was filed on May 7, 2015. Hillman’s petition sought to invalidate only a portion
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`of the claims of the ’446 patent, on grounds of obviousness in view of the prior art.
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`26.
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`The PTAB instituted review based on Hillman’s IPR petition on November 16,
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`2015. On November 14, 2016, the PTAB issued its final written decision, and found claims 1, 7,
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`8, 11, 12, 15–18, 20, 23–26, 31, 32, 38, 39, 42, 43, 46–49, 51, 54–58, 64, 65, 68, 69, 72, 74, 76,
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`79–84, 90, 91, 94, 95, 98, 100, and 104–108 of the ’446 patent to be unpatentable.
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`27.
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`The PTO officially cancelled claims 1, 7, 8, 11, 12, 15–18, 20, 23–26, 31, 32, 38,
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`39, 42, 43, 46–49, 51, 54–58, 64, 65, 68, 69, 72, 74, 76, 79–84, 90, 91, 94, 95, 98, 100, and 104–
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`108 of the ’446 patent via an “Inter Partes Review Certificate” dated February 20, 2018.
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`28.
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`The claims of the ’446 patent that were not at issue in IPR2015-01154, namely
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`claims 2–6, 9, 10, 13, 14, 19, 21, 22, 27–30, 33–37, 40, 41, 44, 45, 50, 52, 53, 59–63, 66, 67, 70,
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`71, 73, 75, 77, 78, 85–89, 92, 93, 96, 97, 99, and 101–103 remain valid and enforceable.
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`29.
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`Hillman subsequently acquired Minute Key and became the owner of the
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`’446 patent.
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 6 of 18 PageID #: 6
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`Claim 22 of the ’446 patent depends from independent claim 1, which means that
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`30.
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`claim 22 includes all the recitations of claim 1.
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`31.
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`Claim 1 of the ’446 patent recites:
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`A self-service kiosk for duplicating keys, comprising:
`a kiosk housing having a customer interface configure[d] to receive payment from
`a customer for the purchase of at least one duplicate of the customer’s key,
`a key-receiving entry in said housing configured to receive at least a portion of the
`customer’s key to be duplicated, wherein the key-receiving entry blocks insertion of the
`head of an inserted key so that only the blade of an inserted key extends into the kiosk
`housing,
`a key analysis system within said housing configured to analyze the blade of a key
`inserted in said key-receiving entry to determine whether the inserted key matches one of
`a group of preselected key types and, if so, which preselected key type is matched,
`a key blank magazine within said housing configured to store key blanks for each
`of said preselected key types,
`a key blank extraction system configured to extract from said magazine a key
`blank for the preselected key type matched by the blade of said key inserted in said key-
`receiving entry,
`a key duplicating system within said kiosk configured to replicate the tooth
`pattern of the blade of said key inserted in said key-receiving entry, on the blade of said
`extracted key blank, and
`a key-removal exit in said housing providing customer access to the key with the
`replicated tooth pattern for removal from the kiosk.
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`Claim 22 of the ’446 patent recites:
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`32.
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`The self-service kiosk of claim 1 in which said kiosk has a front panel that
`includes a guard adjacent said key-receiving entry to protect the head of a key protruding
`from said entry from accidental contact.
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`KeyMe has described the Infringing Products as “self-service key copying kiosks.”
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`33.
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`See Exhibit H at 3 (website stating “Find our self-service key copying kiosks in retailers like Bed
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`Bath & Beyond, Rite Aid and 7-Eleven”; https://blog.key.me/24-hour-locksmith-near-you/; last
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`visited May 19, 2019).
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`34.
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`On information and belief, the Infringing Products include a kiosk housing with a
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`customer interface. KeyMe has encouraged customers on its website to “try out KeyMe’s
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 7 of 18 PageID #: 7
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`touchscreen today!” See Exhibit I at 3 (https://blog.key.me/how-will-the-touchscreen-evolve-in-
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`2017/; last visited May 19, 2019). On information and belief, the Infringing Products accept
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`payment at the kiosk via the customer interface.
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`35.
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`On information and belief, the Infringing Products include a key-receiving entry in
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`the kiosk housing configured to receive at least a portion of a customer’s key to be duplicated. See
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`Exhibit J at 1 (snapshot of website showing a KeyMe kiosk with a key-receiving entry surrounded
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`by the instruction “INSERT KEY”; https://key.me; last visited May 19, 2019); Exhibit K at 2
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`(same; https://blog.key.me/how-our-key-copying-machines-learn/; last visited May 19, 2019). On
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`information and belief, the key-receiving entry blocks insertion of the head of an inserted key so
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`that only the blade of the inserted key extends into the kiosk housing.
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`36.
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`On information and belief, the Infringing Products include a key analysis system
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`within the kiosk housing configured to analyze the blade of a key inserted into the key-receiving
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`entry. See id. at 1-2 (“When scanning and digitally decoding your house keys, our kiosks use two
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`primary processes that mirror how the human brain functions – computer vision and neural
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`networks. Our computer vision technology allows the kiosk to scan and recognize your key using
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`multiple cameras in a process very similar to how facial recognition technology identifies a person
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`based on a digital image.
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` Based on preset algorithms, our key duplication kiosk
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`(http://www.key.me/kiosk) then generates a 3D image of the key’s teeth. When this image is
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`analyzed, the kiosk’s brain comes to life.”).
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`37.
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`On information and belief, the Infringing Products utilize a key analysis system to
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`determine whether the inserted key matches one of a group of preselected key types and, if so,
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`which preselected key type is matched. See id. at 2 (“The key scan is then matched to existing
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`information on various key types that the kiosk has collected.”); see also Exhibit C at 1-2 (“While
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`a traditional locksmith crudely trace-cuts a key by sight, KeyMe kiosks can recall hundreds of
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`thousands of scans that came before and call upon these examples to quickly and accurately
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`identify a wider range of keys...”).
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`38.
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`On information and belief, the Infringing Products contain a key blank magazine
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`within the kiosk housing configured to store key blanks for each of the preselected key types, and
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`a key blank extraction system configured to extract from said magazine a key blank for the
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`preselected key type matched by the blade of said key inserted in said key-receiving entry. The
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`Infringing Products must contain a storage magazine for key blanks within the kiosk housing,
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`because the Infringing Products do not require the user to insert a key blank from outside the kiosk
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`housing in order to duplicate a key. See Exhibit C at 2 (describing how at least some of the
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`Infringing Products “autonomously set itself up and start cutting keys without human
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`involvement.”).
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`39.
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`On information and belief, the Infringing Products contain a key duplication system
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`configured to replicate the tooth pattern of the blade of the key inserted into the key-receiving
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`entry on the blade of a key blank extracted from within the system. See Exhibit K at 2 (“Based
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`on preset algorithms, our key duplication kiosk (http://www.key.me/kiosk) then generates a 3D
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`image of the key’s teeth.”); Exhibit L at 2 (snapshot of a KeyMe website stating “If you’re locked
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`out, all you need to do is locate the nearest KeyMe locksmith in a box and cut a duplicate key.
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`Our kiosks are equipped to print most common key types in just a few seconds.”
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`https://blog.key.me/locksmith-in-a-box-protects-you-from-lockouts/; last visited June 3, 2019);
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`see also Exhibit C at 2 (describing how at least some of the Infringing Products “autonomously
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`set itself up and start cutting keys without human involvement.”).
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 9 of 18 PageID #: 9
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`On information and belief, the Infringing Products contain a key-removal exit in
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`40.
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`the kiosk housing providing the customer access to the key with the replicated tooth pattern for
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`removal from the kiosk. See Exhibit C at 1 (“Each machine can now track the full-cycle progress
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`of a key as it interfaces with our hardware and robotics and eventually drops into the customer’s
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`hand.”); see id. (photograph of one of the Infringing Products revealing a key-removal exit on the
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`lower left side of the front of the kiosk housing directly above “COPY KEYS”); see also Exhibit
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`M (screenshot of a video posted on KeyMe’s YouTube channel showing a newly-cut key blank
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`being dropped into the key-removal exit in the kiosk housing of one of the Infringing Products;
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`https://www.youtube.com/watch?v=NALboqLcZR8 at 0:14; last visited May 20, 2019).
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`41.
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`On information and belief, the Infringing Products therefore meet each and every
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`limitation of claim 1 of the ’446 patent.
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`42.
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`The Infringing Products include a front panel that contains the key-receiving entry.
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`See Exhibit K at 2 (photograph of one of the Infringing Products showing the key-receiving entry
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`in the center of the panel).
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`43. Within this front panel, on information and belief the Infringing Products contain
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`physical features that constitute a guard to protect the head of a key protruding from the key-
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`receiving entry from accidental contact. See Exhibit N (screenshot of a video posted on KeyMe’s
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`YouTube channel; https://www.youtube.com/watch?v=NALboqLcZR8 at 0:12; last visited May
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`20, 2019).
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`44.
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`On information and belief, the Infringing Products therefore meet each and every
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`limitation of at least claim 22 of the ’446 patent, which also contains each and every limitation of
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`claim 1.
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`KEYME’S INFRINGEMENT OF THE ’179 PATENT
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`KeyMe, via the Infringing Products, has infringed, infringes, and will infringe
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`45.
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`46.
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`multiple claims of the ’179 patent, including at least claim 9.
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`47.
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`The ’179 patent is directed generally to “method[s] of duplicating a key” and “key
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`duplication machine[s].” See Exhibit B at col. 17, l. 24 – col. 20, l. 26.
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`48.
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`Claim 9 of the ’179 patent recites:
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`A key duplicating machine comprising:
`a storage housing configured to store key blanks of different cross-sectional
`profiles;
`a blade cross-section detector configured to automatically detect a cross-sectional
`profile of a master key;
`a blank loading system configured to automatically select, from among the different
`stored key blanks, a key blank whose cross-sectional profile matches the automatically-
`detected cross-sectional profile of the master key; and
`a key cutting system configured to cut the selected key blank to duplicate a key
`tooth pattern of the master key.
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`As discussed above, KeyMe has described the Infringing Products as “self-service
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`49.
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`key copying kiosks,” i.e. key duplication machines. See Exhibit H at 3 (website stating “Find our
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`self-service key copying kiosks in retailers like Bed Bath & Beyond, Rite Aid and 7-Eleven”;
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`https://blog.key.me/24-hour-locksmith-near-you/; last visited May 19, 2019).
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`50.
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`As discussed above, on information and belief, the Infringing Products contain a
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`storage magazine configured to store key blanks of different cross-sectional profiles, and a blank
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`loading system configured to automatically select an appropriate key blank that matches the cross-
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`sectional profile of the master key to be duplicated. The Infringing Products must contain a storage
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`magazine for key blanks within the kiosk housing, because the Infringing Products do not require
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`the user to insert a key blank from outside the kiosk housing in order to duplicate a key. See
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 11 of 18 PageID #: 11
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`Exhibit C at 2 (describing how at least some of the Infringing Products “autonomously set itself
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`up and start cutting keys without human involvement.”).
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`51.
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`On information and belief, the Infringing Products contain a blade cross-section
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`detector configured to automatically detect a cross-sectional profile of a master key. KeyMe
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`described its identification technology in a patent application filed on January 4, 2013 which later
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`issued as U.S. Patent No. 8,682,468:
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`More generally, key detector 106 can detect geometric information about a key.
`For example, key detector 106 can detect the dimensions of a key (e.g., length,
`width, height, profile, shoulder shape, etc.) and features of the key. Examples of
`features of the key can include, but are not limited to, a bitting pattern,
`protuberances, dimples, voids, grooves, a milling profile, a milling pattern of the
`key from one or more side views, a milling pattern of the key from a front view
`(e.g., looking from the tip of the key toward the head of the key), etc.
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`Exhibit O at col. 4, ll. 12-21.
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`52.
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`Figure 6 of the KeyMe ’468 patent illustrates KeyMe’s use of a cross-sectional
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`profile of a master key:
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 12 of 18 PageID #: 12
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`Id. at 8 (FIG. 6).
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`53.
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`Figure 12 of the KeyMe ’468 patent provides further evidence that determining the
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`cross-sectional profile of the master key is critical for KeyMe’s identification of an appropriate
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`key blank. Figure 12 depicts KeyMe’s use of the cross-sectional profile to assist its machines in
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`detecting and retrieving a key blank whose cross-sectional profile matches that of the master key:
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`Id. at 15 (FIG. 12); see also id. at col. 6, ll. 31-37 (“In some embodiments, each magazine can
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`contain an inventory of multiple key types so that the number of magazines does not restrict the
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`number of key types which can be accommodated in a kiosk. An illustrative example is shown in
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`FIG. 12. In this embodiment, a key type detection method (e.g., optical imaging), can be used to
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`identify the location of a given blank type within a magazine.”)
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 13 of 18 PageID #: 13
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`On information and belief, this subject matter disclosed in KeyMe’s patent
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`54.
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`application is embodied within the Infringing Products, and the cross-section detecting features
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`described in the patent application are available for use as part of the key identification and
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`duplication process. KeyMe has represented in press releases that its key duplication kiosks
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`contain its patented key identification technology. See Exhibit P at 1 (April 15, 2014 KeyMe
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`press release stating “Through KeyMe's patented technology, customers can scan keys with their
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`smartphone
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`and
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`receive
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`perfect
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`duplicates
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`in
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`the
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`mail.”;
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`http://www.prweb.com/releases/2014/04/prweb11764747.htm/; last visited June 3, 2019); Exhibit
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`Q at 2 (May 2, 2018 KeyMe press release stating “KeyMe kiosks employ a sophisticated and
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`patented combination of artificial intelligence, computer vision, and robotics, which safely and
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`effectively
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`eliminate
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`human
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`error
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`in
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`the
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`key
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`duplication
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`process.”;
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`https://www.prnewswire.com/news-releases/keyme-advances-national-expansion-of-key-
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`duplication-services-300641032.html; last visited June 3, 2019).
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`55.
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`On information and belief, KeyMe detects the cross-sectional profile of an existing
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`key and employs that information during the key identification and duplication processes, in order
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`to identify the existing key and an appropriate matching key blank. This is further supported by
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`KeyMe’s mobile phone app, which requires the customer to capture photographs of both sides of
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`the customer’s existing key before submission to the KeyMe system. See Exhibit R (progressive
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`screen captures from KeyMe’s mobile app during the course of a key identification task showing
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`prompts to the user to capture one photograph of one side of the existing key, then instructing the
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`user to flip the existing key over and capture another photograph of the other side of the key; app
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`last accessed May 19, 2019).
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 14 of 18 PageID #: 14
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`As discussed above, on information and belief, the Infringing Products contain a
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`56.
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`key cutting system configured to cut the selected key blank to duplicate a key tooth pattern of the
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`master key. See Exhibit K at 2 (“Based on preset algorithms, our key duplication kiosk
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`(http://www.key.me/kiosk) then generates a 3D image of the key’s teeth.”); Exhibit L at 2 (“If
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`you’re locked out, all you need to do is locate the nearest KeyMe locksmith in a box and cut a
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`duplicate key. Our kiosks are equipped to print most common key types in just a few seconds.
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`You can use the KeyMe app to locate the closest kiosk and cut a replica using only your
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`fingerprint.”); see also Exhibit C at 2 (describing how at least some of the Infringing Products
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`“autonomously set itself up and start cutting keys without human involvement.”).
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`57.
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`On information and belief, the Infringing Products therefore meet each and every
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`limitation of at least claim 9 of the ’179 patent.
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`COUNT I
`(Infringement of U.S. Patent No. 8,979,446)
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`KeyMe, alone or through its agents and/or intermediaries, directly infringes at least
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`58.
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`59.
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`one claim of the ’446 patent either literally or under the doctrine of equivalents, by manufacturing,
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`using, offering to sell, selling, and/or providing products and/or services that infringe the ’446
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`patent in the United States, including the Infringing Products.
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`60.
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`As such, KeyMe has infringed, is infringing, and will infringe the ’446 patent, either
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`literally or under the doctrine of equivalents, in violation of 35 U.S.C. § 271(a).
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`61.
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`KeyMe had actual knowledge of the ’446 patent by no later than March 30, 2015,
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`when it was served with the complaint in the Minnesota Action.
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 15 of 18 PageID #: 15
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`Accordingly, KeyMe’s infringement of the ’446 patent is willful, and Hillman is
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`62.
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`entitled to enhanced damages.
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`63.
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`Hillman has been damaged, in an amount yet to be determined, by KeyMe’s acts of
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`infringement and will continue to be damaged by such acts in the future.
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`64.
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`Hillman seeks damages in an amount adequate to compensate Hillman for KeyMe’s
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`infringement and a permanent injunction barring KeyMe from further infringement of the ’446
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`patent.
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`65.
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`66.
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`COUNT II
`(Infringement of U.S. Patent No. 9,914,179)
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`KeyMe, alone or through its agents and/or intermediaries, directly infringes at least
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`one claim of the ’179 patent, either literally or under the doctrine of equivalents, by manufacturing,
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`using, offering to sell, selling, and/or providing products and/or services that infringe the ’179
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`patent in the United States, including the Infringing Products.
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`67.
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`As such, KeyMe has infringed, is infringing, and will infringe the ’179 patent, either
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`literally or under the doctrine of equivalents, in violation of 35 U.S.C. § 271(a).
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`68.
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`KeyMe has induced, is inducing, and will induce the infringement of at least one
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`claim of the ’179 patent. As such, KeyMe has infringed, is infringing, and will infringe the ’179
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`patent, either literally or under the doctrine of equivalents, in violation of 35 U.S.C. § 271(b).
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`69.
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`KeyMe has contributed, is contributing, and will contribute to the infringement of
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`at least one claim of the ’179 patent. As such, KeyMe has infringed, is infringing, and will infringe
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 16 of 18 PageID #: 16
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`the ’179 patent, either literally or under the doctrine of equivalents, in violation of 35 U.S.C.
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`§ 271(c).
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`70.
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`On July 19, 2017, KeyMe submitted an information disclosure statement (“IDS”)
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`to the PTO pursuant to its duty of candor to the PTO during prosecution of U.S. Patent Application
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`No. 15/273,347. See Exhibit S. On that IDS, KeyMe listed Minute Key U.S. Patent Publication
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`No. 2013/0017030. Id. at 1. That Minute Key reference, which is the publication of U.S. Patent
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`Application No. 13/622,036, is the direct parent of the ’179 patent, and they share the same
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`specification. By the time the July 19, 2017 KeyMe IDS was filed with the PTO, the application
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`that led to the ’179 patent had been pending for nearly eighteen months.
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`71.
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`Upon information and belief, KeyMe had actual knowledge of the ’179 patent on
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`or about the ’179 patent’s issue date of March 13, 2018.
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`72.
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`Accordingly, KeyMe’s infringement of the ’179 patent is willful, and Hillman is
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`entitled to enhanced damages.
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`73.
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`Hillman has been damaged, in an amount yet to be determined, by KeyMe’s acts of
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`infringement and will continue to be damaged by such acts in the future.
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`74.
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`Hillman seeks damages in an amount adequate to compensate Hillman for KeyMe’s
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`infringement and a permanent injunction barring KeyMe from further infringement of the ’179
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`patent, from inducing others to infringe the ’179 patent, and from contributorily infringing the ’179
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`patent.
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`DEMAND FOR TRIAL BY JURY
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`75.
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`Hillman demands a trial by jury on all issues so triable.
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`PRAYER FOR RELIEF
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 17 of 18 PageID #: 17
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`WHEREFORE, Hillman respectfully requests the following relief from this Court:
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`A.
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`That the Court adjudge and decree that KeyMe has infringed and is infringing,
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`inducing others to infringe, and/or is contributorily infringing one or more claims of the ’446
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`and ’179 patents, either literally or under the doctrine of equivalents;
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`B.
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`That the Court enter a permanent injunction pursuant to 35 U.S.C. § 283
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`enjoining KeyMe, its officers, employees, agents, and all others acting in active concert or
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`participation with them from further acts that infringe the ’446 and ’179 patents;
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`C.
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`That the Court determine the amount of damages pursuant to 35 U.S.C. § 284
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`that are adequate to compensate Hillman for KeyMe’s past, continuing, and future infringement
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`of the ’446 and ’179 patents, and enter judgment for Hillman in the amount of its damages, plus
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`interest and the cost of this action pursuant to 28 U.S.C. § 1920;
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`D.
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`That the Court award Hillman enhanced damages under 35 U.S.C. § 284 for
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`KeyMe’s willful infringement of the ’446 and ’179 patents;
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`E.
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`That the Court enter an order that this case be adjudged and decreed exceptional
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`pursuant to 35 U.S.C. § 285, and that Hillman be awarded its reasonable attorneys’ fees; and
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`F.
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`That the Court award Hillman any further and additional relief as it deems just
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`and proper.
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`Case 2:19-cv-00209-JRG Document 1 Filed 06/03/19 Page 18 of 18 PageID #: 18
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`June 3, 2019
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`Respectfully submitted,
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`/s/Eric H. Findlay
`Eric H. Findlay (Bar No. 00789886)
`FINDLAY CRAFT, P.C.
`102 North College Avenue, Suite 900
`Tyler, TX 75702
`(903) 534-1100
`(903) 534-1137 (fax)
`efindlay@findlaycraft.com
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`Of Counsel:
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`Christopher P. Isaac (pro hac vice to be submitted)
`Ryan P. O’Quinn (pro hac vice to be submitted)
`FINNEGAN, HENDERSON, FARABOW, GARRETT &
`DUNNER, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190
`(571) 203-2700
`(202) 208-4400 (fax)
`chris.isaac@finnegan.com
`oquinnr@finnegan.com
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`Attorney for Plaintiff
`The Hillman Group, Inc.
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