Case 1:16-cv-04586-LTS Document 10 Filed 09/15/16 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`Defendant.
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`Civil Action No.: 1:16-cv-04586 (LTS)
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`BROADSIGN INTERNATIONAL, LLC,
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`Plaintiff,
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`v.
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`T-REX PROPERTY AB,
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`AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff, BroadSign International, LLC (“BroadSign”), brings this action for a
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`declaratory judgment against Defendant, T-Rex Property AB (“T-Rex”). BroadSign seeks,
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`among other things, a declaratory judgment of non-infringement of U.S. Patent No. RE39,470
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`(“the ’470 patent”); U.S. Patent No. 7,382,334 (“the ’334 patent”); and U.S. Patent No.
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`6,430,603 (“the ’603 patent”) (collectively, the “Patents-in-Suit”), and that BroadSign has
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`intervening rights with respect to the ’470 patent. In support thereof, BroadSign alleges as
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`follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for a declaratory judgment of non-infringement of the ’470
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`patent, the ’334 patent, and the ’603 patent, and for intervening rights to the ’470 patent.
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`THE PARTIES
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`2.
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`Plaintiff is a Delaware limited liability company with its principal place of
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`business located at 453 N. Lindbergh Blvd. St. Louis, Missouri 63141. BroadSign is an industry
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`leader in the business of providing digital out-of-home software and solutions for digital signage
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`Case 1:16-cv-04586-LTS Document 10 Filed 09/15/16 Page 2 of 10
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`and displays in venues such as airports, cinemas, shopping malls and offices.
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`3.
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`Upon information and belief, Defendant T-Rex is a company organized and
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`existing under the laws of Sweden
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`4.
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`Upon information and belief, T-Rex’s business is directed to owning and
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`enforcing in litigation the Patents-in-Suit. Upon information and belief, over the last several
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`years, T-Rex has filed approximately 59 patent infringement lawsuits against 80 defendants in
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`17 judicial districts throughout the United States. Upon information and belief, T-Rex does not
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`itself manufacture or sell any products or offer for sale any products or services in the United
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`States.
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`JURISDICTION AND VENUE
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`5.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§2201, et seq.,
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`and under the Patent Laws of the United States, as enacted under Title 35 of the United States
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`Code. This Court has jurisdiction over this action pursuant to 35 U.S.C. §§ 271, et seq., and 28
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`U.S.C. §§ 1331, 1338, 2201, and 2202.
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`6.
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`This Court has both general and specific personal jurisdiction over T-Rex because
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`T-Rex regularly conducts its enforcement and licensing business in New York State. T-Rex has
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`also conducted business in and directed at New York pertaining to the Patents-in-Suit. T-Rex
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`has at least conducted business in New York by filing suit in this forum state in an attempt to
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`enforce the Patents-in-Suit. T-Rex most recently filed suit in the United States District Court for
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`the Southern District of New York on February 1, 2016, asserting these same three Patents-in-
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`Suit in an action against Blue Outdoor Holdings, LLC and its subsidiaries (T-Rex Property AB v.
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`Blue Outdoor LLC, et. al., 1-16-cv-00733-DLC). T-Rex has filed numerous other suits asserting
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`one or more of these patents in the United States District Court for the Southern District of New
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`2
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`Case 1:16-cv-04586-LTS Document 10 Filed 09/15/16 Page 3 of 10
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`York located including the following: T-Rex Property AB, v. Adspace Networks, Inc., 1-15-cv-
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`09073-DLC, filed on November 18, 2015 (’470 patent and ’334 patent); T-Rex Property AB, v.
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`Interactivation Health Networks, LLC, et al., 1-15-cv-08259-PKC, filed on October 20, 2015
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`(’470 patent); T-Rex Property AB, v. Wellness Network, LLC, 1-15-cv-07847-PKC, filed on
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`October 5, 2015 (’470 patent); and T-Rex Property AB, v. Captivate, LLC, 1-15-cv-04188-PAE,
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`filed on May 29, 2015 (’470 patent and ’334 patent).
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`7.
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`Venue is proper in this Court under 28 U.S.C. § 1391 (b) and 1391(c) because T-
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`Rex is subject to personal jurisdiction in this judicial district and has conducted business in this
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`judicial district. Additionally, T-Rex has accused at least two of BroadSign’s customers (Blue
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`Outdoor Holdings and Adspace Networks) of patent infringement through their use of
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`BroadSign’s products in this judicial district, and such products are being used in this judicial
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`district.
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`A SUBSTANTIAL CONTROVERSY EXISTS BETWEEN THE PARTIES
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`8.
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`Upon information and belief, T-Rex is the assignee and owner of the right, title
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`and interest in and to the Patents-in-Suit, including the right to assert all causes of action arising
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`under the Patents-in-Suit and the right to any remedies for infringement.
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`9.
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`Upon information and belief, the business of T-Rex in the United States is to
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`enforce one or more of the Patents-in-Suit against operating businesses that provide information,
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`advertising, medical information and other content on digital displays over a digital signage
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`network in locations that are accessible to the public such as at airports, in elevators, in shopping
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`malls and at medical facilities (hereinafter referred to as “Digital Content Providers”)
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`10.
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`BroadSign is a supplier of hardware and software solutions to operators of
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`networks of digital displays. BroadSign's platform includes an interface for managing a network
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`3
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`of BroadSign Players associated with the digital displays, and among other things, upload
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`desired content, book and manage advertising campaigns and monitor network health. The
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`BroadSign Players organize the content based on booked advertising campaigns and enable
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`content to be played on the associated digital displays.
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`11.
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`To date, at least five (5) BroadSign customers who are Digital Content Providers
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`have been sued by T-Rex for patent infringement on one or more of the Patents-in-Suit. One of
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`those customers, Health Media Network, LLC ("HMN"), was sued on May 27, 2016, in the
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`United States District Court for the Northern District of Illinois in an action entitled T-Rex
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`Property AB v. Health Media Network, LLC, Case No. 1:16-cv-05673 (hereinafter, the "T-
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`Rex/HMN Action"). In the T-Rex/HMN Action, T-Rex accuses BroadSign’s customer of
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`infringing the ’470 patent and identifies the allegedly infringing devices and systems as the
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`defendant’s “digital health media advertising network.” The accused “digital health media
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`advertising network” which T-Rex claims to infringe the ’470 patent is the product that
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`BroadSign sold and delivered to HMN. HMN has no other platform provider for its “digital
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`health media network.”
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`12.
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`In the T-Rex/HMN Action, HMN has also been accused by T-Rex of infringing
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`the ’334 patent. Again, T-Rex identifies HMN's “digital health media advertising network”
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`provided to HMN by BroadSign as the allegedly infringing product. HMN has no other
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`platform provider for its “digital health media network.”
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`13.
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`In the T-Rex/HMN Action, HMN has also been accused by T-Rex of infringing
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`the ’603 patent. Again, T-Rex identifies HMN's “digital health media advertising network”
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`provided to HMN by BroadSign as the allegedly infringing product. HMN has no other
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`platform provider for its “digital health media network.”
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`14.
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`In another action filed by T-Rex against a BroadSign customer, T-Rex, in its
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`Amended Complaint against ContextMedia Inc. and ContextMedia Health, LLC, filed on July
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`11, 2016, in the United States District Court for the Northern District of Illinois, Case No. 1:16-
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`cv-04826, accuses the defendants' "Digital Waiting Room Screen" product of infringing the '470
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`Patent, the '334 Patent and the '603 Patent. The ContextMedia defendants have no other
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`platform provider for its "Digital Waiting Room Screen" product other than BroadSign.
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`15.
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`T-Rex has also had direct discussions and in-person meetings with BroadSign in
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`which T-Rex has demanded that BroadSign take a license to the patents-in-suit in order for T-
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`Rex to stop suing BroadSign's customers for patent infringement.
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`16.
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`As a result of the T-Rex lawsuits filed against BroadSign’s customers over the
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`past year accusing BroadSign’s products and services of infringing each of the Patents-in-Suit,
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`and as a further result of the demands by T-Rex that BroadSign take a license to the patents in
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`suit to prevent further patent infringement actions against BroadSign's customers, there is a real,
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`immediate and justiciable controversy between T-Rex and BroadSign concerning infringement
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`of sufficient immediacy to warrant the issuance of a declaratory judgment. There is a real and
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`palpable threat of suit by T-Rex against BroadSign and/or against additional BroadSign
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`customers arising from their use of BroadSign’s products. This threat is real and not idle. Not
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`only has T-Rex demanded that BroadSign take a license to the patents in suit, but in addition T-
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`Rex has brought suits against BroadSign’s existing customers and will likely continue to sue
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`other BroadSign customers and has filed at least 43 patent infringement suits asserting one or
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`more of these same patents in 17 separate judicial districts throughout the United States.
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`17.
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`Given the lawsuits against BroadSign’s customers, the demand for licensing
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`made to BroadSign and T-Rex’s litigious business model and conduct, T-Rex’s actions have
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`placed a cloud over BroadSign and its business and have injured or are injuring BroadSign’s
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`business, creating a concrete and immediate justiciable controversy between BroadSign and T-
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`Rex. BroadSign cannot simply stand by while its business suffers irreparable harm to await yet
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`another filing of litigation by T-Rex at a future date. BroadSign seeks a declaratory judgment so
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`that its business can move forward without the imminent and ever-present threat of litigation.
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`CAUSES OF ACTION
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`COUNT ONE
`Declaratory Judgment of Non-Infringement of U.S. Patent No. RE39,470
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`18.
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`BroadSign repeats and reasserts each of the allegations contained in paragraphs 1
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`through 15 as if fully set forth herein.
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`19.
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`BroadSign has not directly infringed and does not directly infringe, either literally
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`or under the doctrine of equivalents, any valid and enforceable claim of the ’470 patent.
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`20.
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`BroadSign has not indirectly infringed and does not indirectly infringe any valid
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`and enforceable claim of the ’470 patent, either by inducing infringement or contributory
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`infringement.
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`21.
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`T-Rex has accused BroadSign’s products of infringing at least claims 25 and 26
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`of the ’470 patent. Claim 26 depends from claim 25.
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`22.
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`BroadSign’s products do not infringe claim 25 of the ’470 patent, and therefore do
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`not infringe any dependent claim of claim 26, for at least the reason that BroadSign’s products
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`do not “receiv[e] control instructions from at least one external information mediator” as
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`required by the claim.
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`23.
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`Accordingly, BroadSign seeks a declaratory judgment pursuant to 28 U.S.C.
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`§§ 2201-02 that no valid and enforceable claim of the ’470 patent is infringed by BroadSign.
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`6
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`COUNT TWO
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,382,334
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`24.
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`BroadSign repeats and reasserts each of the allegations contained in paragraphs 1
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`through 15 as if fully set forth herein.
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`25.
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`BroadSign has not directly infringed and does not directly infringe, either literally
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`or under the doctrine of equivalents, any valid and enforceable claim of the ’334 patent.
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`26.
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`BroadSign has not indirectly infringed and does not indirectly infringe any valid
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`and enforceable claim of the ’334 patent, either by inducing infringement or contributory
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`infringement.
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`27.
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`T-Rex has accused BroadSign’s products of infringing at least claims 22 and 32
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`of the ’334 patent.
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`28.
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`BroadSign’s products do not infringe claim 22 of the ’334 patent for at least the
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`reason that BroadSign’s products do not “us[e] a control center for coordinating and controlling
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`electronic displays.” Similarly, claim 32 of the ’334 patent is not infringed for at least the reason
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`that BroadSign’s products do not have the claimed “computerized control center means.”
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`29.
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`Accordingly, BroadSign seeks a declaratory judgment pursuant to 28 U.S.C.
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`§§ 2201-02 that no valid and enforceable claim of the ’334 patent is infringed by BroadSign.
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`COUNT THREE
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 6,430,603
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`30.
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`BroadSign repeats and reasserts each of the allegations contained in paragraphs 1
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`through 15 as if fully set forth herein.
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`31.
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`BroadSign has not directly infringed and does not directly infringe, either literally
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`or under the doctrine of equivalents, any valid and enforceable claim of the ’603 patent.
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`7
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`32.
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`BroadSign has not indirectly infringed and does not indirectly infringe any valid
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`and enforceable claim of the ’603 patent, either by inducing infringement or contributory
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`infringement.
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`33.
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`T-Rex has accused BroadSign’s products of infringing at least claims 42 and 43
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`of the ’603 patent. Claims 42 and 43 depend from claim 13.
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`34.
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`BroadSign’s products do not infringe claim 13 of the ’603 patent, and therefore do
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`not infringe any dependent claim of claim 13, for at least the reason that BroadSign’s products
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`do not include the claimed “network interconnecting a plurality of electronic displays provided at
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`various geographic locations.”
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`35.
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`Accordingly, BroadSign seeks a declaratory judgment pursuant to 28 U.S.C.
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`§§ 2201-02 that no valid and enforceable claim of the ’603 patent is infringed by BroadSign.
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`COUNT FOUR
`Declaratory Judgment of Intervening Rights with Respect to U.S. Patent No. RE39,470
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`36.
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`BroadSign repeats and reasserts each of the allegations contained in paragraphs 1
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`through 15 as if fully set forth herein.
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`37.
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`38.
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`The ’470 patent is a reissue of U.S. Patent No. 6,005,534 (“the ’534 patent”).
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`As of January 16, 2007, when the ’470 patent reissued, BroadSign was selling the
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`product that has been accused by T-Rex of infringement in lawsuits against BroadSign’s
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`customers.
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`39.
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`40.
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`Each of the original claims of the ’534 patent were amended during reissue.
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`The claims of the ’470 patent are not substantially identical to the claims of the
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`’534 patent as originally issued.
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`41.
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`BroadSign and its customers are entitled to absolute and equitable intervening
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`rights with respect to the ’470 patent pursuant to 35 U.S.C. § 252.
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`42.
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`As a result of the acts described herein, there exists a substantial controversy of
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`sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
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`43.
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`An actual and justiciable controversy exists between BroadSign and T-Rex as to
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`whether BroadSign has absolute and/or equitable intervening rights. A judicial declaration is
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`necessary and appropriate so that BroadSign may ascertain its rights regarding the ’470 patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff BroadSign respectfully requests the following relief:
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`A.
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`a declaratory judgment that no valid and enforceable claim of the ’470 patent is
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`infringed by BroadSign;
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`B.
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`a declaratory judgment that no valid and enforceable claim of the ’334 patent is
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`infringed by BroadSign;
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`C.
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`a declaratory judgment that no valid and enforceable claim of the ’603 patent is
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`infringed by BroadSign;
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`D.
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`a declaratory judgment that BroadSign has absolute and/or equitable intervening
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`rights pursuant to 35 U.S.C. § 252 with respect to the ’470 patent;
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`E.
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`an order enjoining T-Rex, its officers, directors, agents, counsel, servants and
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`employees, and successors in interest and assigns, all persons in active concert or participation with any
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`of them, from alleging infringement or instituting an action based on infringement of the ’470 patent, ’334
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`patent, and ’603 patent against BroadSign or any of BroadSign’s customers or downstream users of
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`BroadSign’s products;
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`F.
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`an order declaring that BroadSign is the prevailing party and that this is an
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`exceptional case under 35 U.S.C. § 285 and awarding BroadSign its costs and attorneys’ fees in
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`connection with this action; and
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`G.
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`such other and further relief as the Court deems just, reasonable and proper.
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`Case 1:16-cv-04586-LTS Document 10 Filed 09/15/16 Page 10 of 10
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`Respectfully submitted,
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`BROWN RUDNICK LLP
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`By: /s/ Alfred R. Fabricant
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`Alfred R. Fabricant
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`Email: vrubino@brownrudnick.com
`Alessandra Carcaterra Messing
`Email: amessing@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
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`Attorneys for Plaintiff
`BroadSign International, LLC
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`Dated: September 15,2016
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`62566353 v1-WorkSiteUS-033387/0001
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`10
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