Case 1:16-cv-04586-LTS-HBP Document 55 Filed 07/19/18 Page 1 of 23
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`BROADSIGN INTERNATIONAL, LLC,
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`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`Civil Action No.: 1:16-cv-04586 (LTS)
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`T-REX PROPERTY AB,
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`Defendant.
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`v.
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`Plaintiff,
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`SECOND AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`1.
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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 and invalidity of U.S. Patent
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`No. RE39,470 (“the ’470 patent”) (attached hereto as Exhibit 1); U.S. Patent No. 7,382,334 (“the
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`’334 patent”) (attached hereto as Exhibit 2); and U.S. Patent No. 6,430,603 (“the ’603 patent”)
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`(attached hereto as Exhibit 3); (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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`2.
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`This is an action for a declaratory judgment of non-infringement and invalidity of
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`the ’470 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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`3.
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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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`and displays in venues such as airports, cinemas, shopping malls and offices.
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`4.
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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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`5.
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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 17
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`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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`6.
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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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`7.
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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 has
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`at least conducted business in New York by filing suit in this forum state in an attempt to enforce
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`the Patents-in-Suit. T-Rex most recently filed suit in the United States District Court for the
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`Southern District of New York on February 1, 2016, asserting these same three Patents-in-Suit in
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`an action against Blue Outdoor Holdings, LLC and its subsidiaries (T-Rex Property AB v. Blue
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`Outdoor LLC, et. al., 1-16-cv-00733-DLC). T-Rex has filed numerous other suits asserting one
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`or more of these patents in the United States District Court for the Southern District of New
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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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`8.
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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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`9.
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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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`10.
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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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`11.
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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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`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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`12.
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`As a supplier of digital out-of-home media products to the digital advertising
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`industry, Plaintiff is under threat of litigation because T-Rex’s aggressive litigation strategy
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`involves asserting the Patents-in-Suit against both customers and suppliers. T-Rex has filed
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`complaints alleging patent infringement of the Patents-in-Suit against suppliers similarly-situated
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`to BroadSign, including suppliers of digital out-of-home media software and/or hardware. T-
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`Rex has filed complaints against BroadSign’s direct-competitor suppliers, including at least:
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`Barco, Inc., Prismview, LLC (A Samsung Electronics Company), Table Top Media, LLC, Clear
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`Channel Outdoor Holdings, Inc., GPS Industries, LLC, Quality Systems Technology, Inc., Four
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`Winds Interactive, LLC, AutoNetTV Media, Inc., Cardinal Health, Inc., Zoom Media Corp.,
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`ANC Sports Enterprises, LLC, iPort Media Networks, LLC, Reach Sports Marketing Group,
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`Inc., RMG Networks Holding Corporation, and Time-O-Matic d/b/a Watchfire.
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`13.
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`Each of these suppliers has supplied software and/or hardware products to
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`advertising customers in the digital out-of-home media space, and T-Rex’s complaints allege
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`infringement of the Patents-in-Suit against those products.
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`14.
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`In its complaint against Barco, Inc., T-Rex alleged that the “infringing devices
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`and systems include Defendant’s digital signage network that employs Barco’s digital signage
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`platform, including its digital displays, digital media players, and DISplay Studio software
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`platform.” T-Rex Property AB v. Barco, Inc., Case No. 1:16-cv-6938 (N.D. Ill. July 1, 2016); T-
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`Rex Property AB v. Barco, Inc., Case No. 1:16-cv-6940 (N.D. Ill. July 1, 2016). Barco’s “digital
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`signage network that employs Barco’s digital signage platform, including its digital displays,
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`digital media players, and DISplay Studio software platform” makes it a direct competitor in the
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`same industry as BroadSign.
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`15.
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`In its complaint against Prismview, LLC (A Samsung Electronics Company), T-
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`Rex alleged that “the infringing devices and systems include Defendant’s digital signs, other
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`electronic displays and its PrismView digital signage software and systems that are used to
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`control the display of images on its digital sign(s) and other electronic display(s).” T-Rex
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`Property AB v. Prismview, LLC, Case No. 4:16-cv-00404 (E.D. Tex. June 16, 2016).
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`Prismview’s “digital signage software and systems that are used to control the display of images
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`on its digital sign(s) and other electronic display(s)” make it a direct competitor in the same
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`industry as BroadSign.
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`16.
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`In its complaint against Table Top Media, LLC, T-Rex alleged that “the
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`infringing devices and systems include Defendant’s digital signage network and displays that use
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`the Android OS based digital signage platform.” T-Rex Property AB v. Table Top Media, LLC,
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`Case No. 1:16-cv-6932 (N.D. Ill. July 1, 2016). Table Top Media’s “digital signage network and
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`displays that use the Android OS based digital signage platform” make it a direct competitor in
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`the same industry as BroadSign.
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`17.
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`In its complaint against Clear Channel Outdoor Holdings, Inc., T-Rex alleged that
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`“the infringing devices and systems include Clear Channel’s digital advertising network and the
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`Clear Channel Airports digital media and advertising network, which is also marketed as the
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`ClearVision Network and/or the ClearVision Airport Television Network.” T-Rex Property AB
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`v. Clear Channel Outdoor Holdings, Inc. et al, Case No. 6:16-cv-00974 (E.D. Tex. June 30,
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`2016); T-Rex Property AB v. Clear Channel Outdoor Holdings, Inc., Case No. 5:12-cv-01162
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`(N.D. Tex. Dec. 11, 2012). Clear Channel Outdoor’s “digital advertising network and the Clear
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`Channel Airports digital media and advertising network, which is also marketed as the
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`ClearVision Network and/or the ClearVision Airport Television Network” make it a direct
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`competitor in the same industry as BroadSign.
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`18.
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`In its complaint against GPS Industries, LLC, T-Rex alleged that “the infringing
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`devices and systems include Defendant’s Visage Media Network.” T-Rex Property AB v. GPS
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`Industries, LLC, Case No. 4:16-cv-00458 (E.D. Tex. June 30, 2016). GPS Industries’s “Visage
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`Media Network” make it a direct competitor in the same industry as BroadSign.
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`19.
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`In its complaint against Quality Systems Technology, Inc., T-Rex alleged that
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`“the infringing devices and systems include Defendant’s digital signage network, including its
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`digital signage platform, displays, and Quest Player software.” T-Rex Property AB v. Quality
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`Systems Technology, Inc., Case No. 1:16-cv-6942 (N.D. Ill. July 1, 2016). Quality Systems
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`Technology’s “digital signage network, including its digital signage platform, displays, and
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`Quest Player software” make it a direct competitor in the same industry as BroadSign.
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`20.
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`In its complaint against Four Winds Interactive, LLC, T-Rex alleged that “the
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`infringing devices and systems include Defendant’s digital signage network and displays that use
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`FWI’s Content Manager and FWI’s Content Player Software.” T-Rex Property AB v. Four
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`Winds Interactive, LLC, Case No. 1:16-cv-6934 (N.D. Ill. July 1, 2016). Four Winds
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`Interactive’s “digital signage network and displays that use FWI’s Content Manager and FWI’s
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`Content Player Software” make it a direct competitor in the same industry as BroadSign.
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`21.
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`In its complaint against AutoNetTV Media, Inc., T-Rex alleged that “the
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`infringing devices and systems include Defendant’s digital network that uses 1-2-1 VIEW’s
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`content management software.” T-Rex Property AB v. AutoNetTV Media, Inc., Case No. 1:16-
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`cv-6649 (N.D. Ill. July 1, 2016). AutoNetTV Media’s “digital network that uses 1-2-1 VIEW’s
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`content management software” make it a direct competitor in the same industry as BroadSign.
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`22.
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`In its complaint against Cardinal Health, Inc., T-Rex alleged that “the infringing
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`devices and systems include Defendant’s Pharmacy Health Network.” T-Rex Property AB v.
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`Cardinal Health, Inc., Case No. 1:16-cv-5484 (N.D. Ill. May 23, 2016). Cardinal Health’s
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`“Pharmacy Health Network” makes it a direct competitor in the same industry as BroadSign.
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`23.
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`In its complaint against Zoom Media Corp., T-Rex alleged that “the infringing
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`devices and systems include Defendant’s Zoom Fitness Video Network, which includes…digital
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`signage.” T-Rex Property AB v. Zoom Media Corp., Case No. 0:16-cv-581 (N.D. Ill. March 21,
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`2016). Zoom Media’s “Zoom Fitness Video Network, which includes…digital signage” make it
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`a direct competitor in the same industry as BroadSign.
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`24.
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`In its complaint against ANC Sports Enterprises, LLC, T-Rex alleged that “the
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`infringing devices and systems include Defendant’s digital media software, signage operation
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`and control systems, which include integrated digital signage, and media management and
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`playback software that is used to broadcast dynamic images” and “vSOFT, Defendant’s
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`proprietary media management and playback software.” T-Rex Property AB v. ANC Sports
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`Enterprises, LLC, Case No. 0:16-cv-581 (D. Minn. March 7, 2016). ANC Sports Enterprises’s
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`“digital media software, signage operation and control systems, which include integrated digital
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`signage, and media management and playback software that is used to broadcast dynamic
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`images” and “vSOFT, Defendant’s proprietary media management and playback software” make
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`it a direct competitor in the same industry as BroadSign.
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`25.
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`In its complaint against iPort Media Networks, LLC, T-Rex alleged that “the
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`infringing devices and systems include Defendant’s digital place-based media networks that
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`operate under the iPort Optical Network and the Your Life Your Skin Network branding.” T-Rex
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`Property AB v. iPort Media Networks, LLC, Case No. 1:16-cv-1583 (N.D. Ill. Jan. 29, 2016).
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`iPort Media Networks’s “digital place-based media networks” make it a direct competitor in the
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`same industry as BroadSign.
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`26.
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`In its complaint against Reach Sports Marketing Group, Inc., T-Rex alleged that
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`“the infringing devices and systems include Defendant’s digital place-based media network.” T-
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`Rex Property AB v. Reach Sports Marketing Group, Inc., Case No. 0:16-cv-070 (D. Minn. Jan.
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`13, 2016). Reach Sports Marketing Group’s “digital place-based media network” make it a
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`direct competitor in the same industry as BroadSign.
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`27.
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`In its complaint against RMG Networks Holding Corporation, T-Rex alleged
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`infringement of the Patents-in-Suit because “content management systems, which include, for
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`example and without limitation, the Symon Design Studio to manage and schedule broadcast
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`content for display in its corporate headquarters in Texas at least during certain demonstrations
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`for customers or for prospective customers.” T-Rex Property AB v. RMG Networks Holding
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`Corporation, Case No. 3:15-cv-738 (N.D. Tex. March 5, 2015). RMG Networks Holding’s
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`“content management systems, which include, for example and without limitation, the Symon
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`Design Studio to manage and schedule broadcast content for display…for customers or for
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`prospective customers” make it a direct competitor in the same industry as BroadSign.
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`28.
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`In its complaint against Time-O-Matic (d/b/a Watchfire), T-Rex alleges that
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`Watchfire’s “digital display boards that operate on a digital information system through its Ignite
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`software, user manuals, and other documents that instruct customers” to infringe the Patents-in-
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`Suit. T-Rex Property AB v. Time-O-Matic, LLC, Case No. 1:14-cv-1488 (C.D. Ill. Dec. 23,
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`2014). Watchfire’s “digital display boards that operate on a digital information system through
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`its Ignite software” make it a direct competitor in the same industry as BroadSign.
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`29.
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`To date, at least seven (7) BroadSign customers who are Digital Content
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`Providers have been sued by T-Rex for patent infringement on one or more of the Patents-in-
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`Suit. One of those customers, Health Media Network, LLC (“HMN”), was sued on May 27,
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`2016, in the United States District Court for the Northern District of Illinois in an action entitled
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`T-Rex Property AB v. Health Media Network, LLC, Case No. 1:16-cv-05673 (hereinafter, the
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`“HMN Action”). A copy of the complaint in the HMN Action is annexed hereto as Exhibit 4. In
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`the HMN Action, T-Rex accuses BroadSign’s customer of infringing the ’470 patent and
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`identifies the allegedly infringing devices and systems as the defendant’s “digital health media
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`advertising network.” The accused “digital health media advertising network” which T-Rex
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`claims to infringe the ’470 patent is the product that BroadSign sold and delivered to HMN.
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`HMN has no other platform provider for its “digital health media network.”
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`30.
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`In the HMN Action, HMN has also been accused by T-Rex of infringing the ’334
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`patent (Exh. 4 at 16). Again, T-Rex identifies HMN’s “digital health media advertising
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`network” 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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`31.
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`In the HMN Action, HMN has also been accused by T-Rex of infringing the ’603
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`patent (Exhibit 4 at 18). Again, T-Rex identifies HMN’s “digital health media advertising
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`network” 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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`32.
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`In another action filed by T-Rex against a BroadSign customers ContextMedia
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`Inc. and ContextMedia Health, LLC, on July 11, 2016 in the United States District Court for the
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`Northern District of Illinois, Case No. 1:16-cv-04826 (the "ContextMedia Action"), T-Rex
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`accuses the defendants’ “Digital Waiting Room Screen” product of infringing the ‘470 Patent,
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`the ‘334 Patent and the ‘603 Patent. A copy of the Amended Complaint in the ContextMedia
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`Action is attached hereto as Exhibit 5. The ContextMedia defendants have no other platform
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`provider for its “Digital Waiting Room Screen” product other than the BroadSign platform.
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`33.
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`In the ContextMedia Action, T-Rex set forth its basis for alleging that
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`ContextMedia infringes the ’470 Patent, the ’334 Patent, and the ’603 Patent by comparing each
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`of the limitations of at least one claim of each patent to the Digital Waiting Room Screen
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`product, which includes BroadSign components and software (the Broadsign Player). See
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`Exhibit 5 at 15-18.
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`34.
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`For example, in the ContextMedia Action, T-Rex alleged that each of the
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`limitations of claim 25 of the ’470 Patent are met by BroadSign’s software within the Digital
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`Waiting Room Screen product in the form of a prose claim chart.
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`35.
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`Claim 25 of the ’470 Patent (Exhibit 1) recites:
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`A method of selectively displaying digital information at one or more of a
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`plurality of locations, said method comprising:
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`receiving control instructions from at least one external information mediator;
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`using said control instructions to generate an exposure list, said exposure list specifying
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`three or more of the following items:
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`i)
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`ii)
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`iii)
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`what information content is to be displayed;
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`at which of said plurality of locations said information content is to be displayed;
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`when said information content is to be displayed for each location at which
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`content is to be displayed; and
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`iv)
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`how long said information content is to be displayed for each location at which
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`content is to be displayed
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`displaying images at one or more of said locations in accordance with said exposure list;
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`and
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`permitting said exposure list to be dynamically updated.
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`36.
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`T-Rex alleged that the Digital Waiting Room Screen product meets the first
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`limitation of claim 25 of the ’470 Patent: “receives control instructions from at least one external
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`information mediator.” See, Exhibit 5 at ¶ 50. While BroadSign disputes the ultimate issue of
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`whether its components meet this limitation, the functionality identified by T-Rex that allegedly
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`meets this claim limitation is provided by BroadSign’s software components within the Digital
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`Waiting Room Screen product (i.e. the BroadSign Player). T-Rex alleged that the Digital
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`Waiting Room Screen product meets the second limitation of claim 25 of the ’470 Patent:
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`“generate an exposure list, with said exposure list specifying three or more of the following
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`items: i) what information content is to be displayed; ii) at which of the plurality of locations the
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`information content is to be displayed; iii) when the information content is to be displayed for
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`each location at which content is to be displayed; and iv) how long the information content is to
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`be displayed for each location at which content is to be displayed.” See, Exhibit 5 at ¶ 51.
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`T-Rex further alleged that the Digital Waiting Room Screen product meets this limitation by
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`using “smart playlist technology [to curate] programming that is customized to each office
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`according to its specific patient population.” See, Exhibit 5 at ¶ 51. While BroadSign
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`disputes the ultimate issue of whether its components meet this limitation, the functionality
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`identified by T-Rex that allegedly meets this claim limitation is provided by BroadSign’s
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`software components within the Digital Waiting Room Screen product (i.e. the BroadSign
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`Player).
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`37.
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`T-Rex alleged that the Digital Waiting Room Screen product meets the third
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`limitation of claim 25 of the ’470 Patent: “displays images at one or more of said locations in
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`accordance with the exposure list.” See, Exhibit 5 at ¶ 52. T-Rex further alleged that the Digital
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`Waiting Room Screen product meets this limitation by delivering “condition-specific content to
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`patients while they wait.” See, Exhibit 5 at ¶ 52. While BroadSign disputes the ultimate issue of
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`whether its components meet this limitation, the functionality identified by T-Rex that allegedly
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`meets this claim limitation is provided by BroadSign’s software components within the Digital
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`Waiting Room Screen product (i.e. the BroadSign Player).
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`38.
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`T-Rex alleged that the Digital Waiting Room Screen product meets the fourth and
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`final limitation of claim 25 of the ’470 Patent: “permit[] the exposure list to be dynamically
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`updated.” See, Exhibit 5 at ¶ 53. T-Rex further alleged that the Digital Waiting Room Screen
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`product meets this limitation because “content is refreshed daily and sent to screens based on
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`patient demographic data.” See, Exhibit 5 at ¶ 53. While BroadSign disputes the ultimate issue
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`of whether its components meet this limitation, the functionality identified by T-Rex that
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`allegedly meets this claim limitation is provided by BroadSign’s software components within the
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`Digital Waiting Room Screen product (i.e. the BroadSign Player).
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`39.
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`T-Rex has also alleged in an element by element textual claim chart that each
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`limitation of claim 22 of the ’334 Patent is met by BroadSign’s Digital Waiting Room Screen
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`product. See, Exhibit 5 at ¶¶ 63-75. While BroadSign disputes the ultimate issue of whether its
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`components meet these limitations, the functionality identified by T-Rex that allegedly meets
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`these claim limitations is provided by BroadSign’s software components within the Digital
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`Waiting Room Screen product (i.e. the BroadSign Player).
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`40.
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`T-Rex has also alleged in an element by element textual claim chart that each
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`limitation of claims 42 and 43 of the ’603 Patent is met by BroadSign’s Digital Waiting Room
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`Screen product. See, Exhibit 5 at ¶¶ 77-87. While BroadSign disputes the ultimate issue of
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`whether its components meet these limitations, the functionality identified by T-Rex that
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`allegedly meets these claim limitations is provided by BroadSign’s software components within
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`the Digital Waiting Room Screen product (i.e. the BroadSign Player).
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`41.
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`The claim charts set forth as prose in the ContextMedia Amended Complaint are
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`sufficient to support declaratory judgment standing. Arris Group v. British Telecomm., 639 F.3d
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`1368, 1375, 1381 (Fed. Cir. 2011).
`
`42.
`
`BroadSign has knowledge of T-Rex’s allegations that the components of the
`
`Digital Waiting Room product provided by BroadSign are specially made and adapted to
`
`function in a way that meets each limitation of at least one claim of each of the ’470, ’334, and
`
`’603 Patents.
`
`43.
`
`In another action filed by T-Rex against BroadSign customers JCDecaux North
`
`America Holdings, Inc. and JCDecaux North America, Inc., filed on May 9, 2016, in the United
`
`States District Court for the Eastern District of Texas, Case No. 4:16-cv-00303 (the "JCDecaux
`
`Action"), T-Rex accused the defendants’ products (i.e., “Showscreens, a digital media product
`
`that is used in their Mallscape network, Defendants’ digital billboards, and Defendants’ digital
`
`airport advertising network, including their Prestige digital network”) of infringing the Patents-
`
`in-Suit. BroadSign is a platform provider for the accused JCDecaux products.
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`13
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`Case 1:16-cv-04586-LTS-HBP Document 55 Filed 07/19/18 Page 14 of 23
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`44.
`
`As a direct result of T-Rex’s complaints, customers including ContextMedia and
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`JCDecaux, have sought indemnification from BroadSign.
`
`45.
`
`BroadSign knows that its hardware and software solutions, including the
`
`BroadSign Player product, is used in HMN’s “digital health media advertising network,”
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`ContextMedia’s “Digital Waiting Room Screen,” and JCDecaux’s “Showscreens,” “Mallscape
`
`network,” “digital billboards,” “digital airport advertising network,” and “Prestige digital
`
`network.” BroadSign works with customers HMN, ContextMedia, and JCDecaux to make its
`
`hardware and software solutions (including the BroadSign Player product) and to adapt its
`
`hardware and software solutions (including the BroadSign Player product) for use in HMN’s
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`“digital health media advertising network,” ContextMedia’s “Digital Waiting Room Screen,” and
`
`JCDecaux’s “Showscreens,” “Mallscape network,” “digital billboards,” “digital airport
`
`advertising network,” and “Prestige digital network.”
`
`46.
`
`BroadSign’s hardware and software solutions (including the BroadSign Player
`
`portion of the Digital Waiting Room Screen product) (e.g., Exhibit 5 at ¶¶ 50-87) are built to
`
`order for its customers.
`
`47.
`
`T-Rex has had direct discussions and in-person meetings with BroadSign in
`
`which T-Rex has demanded that BroadSign take a license to the Patents-in-Suit in order for T-
`
`Rex to stop suing BroadSign’s customers for patent infringement. On June 28, 2016, BroadSign
`
`and T-Rex met in a meeting room in Landvetter Airport Conference, Gothenberg, Sweden.
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`During that meeting, BroadSign requested that T-Rex agree to dismiss the pending lawsuits
`
`against BroadSign’s customers and give BroadSign a covenant not to sue that would cover
`
`BroadSign and its customers. In the first week of July, 2016, and without prior discussion of a
`
`license, Mats Hylin, T-Rex’s CEO, sent BroadSign a “Patent Agreement.” The agreement
`
`
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`14
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`Case 1:16-cv-04586-LTS-HBP Document 55 Filed 07/19/18 Page 15 of 23
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`required an unspecified monetary payment in exchange for a license. The agreement expressly
`
`provides that one of the purposes for the parties entering into it is so that BroadSign can obtain
`
`from T-Rex a covenant not to sue its customers to the extent they operate digital display systems
`
`consisting of BroadSign’s products. T-Rex assured BroadSign that agreeing to take a license was
`
`the only way to protect BroadSign and its customers from litigation and future law suits.
`
`BroadSign did not request any sample agreements or any draft or form of license agreement.
`
`48.
`
`As a result of (a) the T-Rex lawsuits filed against BroadSign’s customers accusing
`
`BroadSign’s products and services of infringing each of the Patents-in-Suit; (b) the T-Rex
`
`lawsuits filed against suppliers similarly-situated to BroadSign accusing those suppliers’
`
`products and services of infringing each of the Patents-in-Suit; and (c) the demands by T-Rex
`
`that BroadSign take a license to the Patents-in-Suit to prevent further patent infringement actions
`
`against BroadSign’s customers, there exists a real, immediate and justiciable controversy
`
`between T-Rex and BroadSign concerning infringement of sufficient immediacy to warrant the
`
`issuance of a declaratory judgment. There exists a real and palpable threat of suit by T-Rex
`
`against BroadSign and/or against additional BroadSign customers arising from their use of
`
`BroadSign’s products. This threat is real and not idle. Not only has T-Rex demanded that
`
`BroadSign take a license to the Patents-in-Suit and has brought suits against its customers, but .in
`
`addition T-Rex has brought suits against BroadSign’s direct competitors in the same industry.
`
`49.
`
`T-Rex’s actions have placed a cloud over BroadSign and its business and
`
`continues to injure BroadSign’s business, creating a concrete and immediate justiciable
`
`controversy between BroadSign and T-Rex. BroadSign cannot simply stand by while its
`
`business suffers irreparable harm to await yet another filing of litigation by T-Rex at a future
`
`
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`15
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`Case 1:16-cv-04586-LTS-HBP Document 55 Filed 07/19/18 Page 16 of 23
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`date. BroadSign seeks a declaratory judgment so that its business can move forward without the
`
`imminent and ever-present threat of litigation.
`
`CAUSES OF ACTION
`
`COUNT ONE
`Declaratory Judgment of Non-Infringement of U.S. Patent No. RE39,470
`
`50.
`
`BroadSign repeats and reasserts each of the allegations contained in paragraphs 1
`
`through 49 as if fully set forth herein.
`
`51.
`
`BroadSign has not directly infringed and does not directly infringe, either literally
`
`or under the doctrine of equivalents, any valid and enforceable claim of the ’470 patent.
`
`52.
`
`BroadSign has not indirectly infringed and does not indirectly infringe any valid
`
`and enforceable claim of the ’470 patent, either by inducing infringement or contributory
`
`infringement.
`
`53.
`
`T-Rex has accused BroadSign’s products of infringing at least claims 25 and 26
`
`of the ’470 patent. Claim 26 depends from claim 25.
`
`54.
`
`BroadSign’s products do not infringe claim 25 of the ’470 patent, and therefore do
`
`not infringe any dependent claim of claim 26, for at least the reason that BroadSign’s products
`
`do not “receiv[e] control instructions from at least one external information mediator” as
`
`required by the claim.
`
`55.
`
`Accordingly, BroadSign seeks a declaratory judgment pursuant to 28 U.S.C.
`
`§§ 2201-02 that no valid and enforceable claim of the ’470 patent is infringed by BroadSign.
`
`
`
`16
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`

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`Case 1:16-cv-04586-LTS-HBP Document 55 Filed 07/19/18 Page 17 of 23
`
`COUNT TWO
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,382,334
`
`56.
`
`BroadSign repeats and reasserts each of the allegations contained in paragraphs 1
`
`through 49 as if fully set forth herein.
`
`57.
`
`BroadSign has not directly infringed and does not directly infringe, either literally
`
`or under the doctrine of equivalents, any valid and enforceable claim of the ’334 patent.
`
`58.
`
`BroadSign has not indirectly infringed and does not indirectly infringe any valid
`
`and enforceable claim of the ’334 patent, either by inducing infringement or contributory
`
`infringement.
`
`59.
`
`T-Rex has accused BroadSign’s products of infringing at least claims 22 and 32
`
`of the ’334 patent.
`
`60.
`
`BroadSign’s products do not infringe claim 22 of the ’334 patent for at least the
`
`reason that BroadSign’s products do not “us[e] a control center for coordinating