Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`Defendant.
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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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`Civil Action No.
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`JURY TRIAL REQUESTED
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`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.
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`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
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`patent”) (attached hereto as Exhibit 3) (collectively, the “Patents-in-Suit”), and that
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`BroadSign has intervening rights with respect to the ’470 patent. In support thereof,
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`BroadSign alleges as 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
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`industry leader in the business of providing digital out-of-home software and solutions for
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` IPR2016-01869 Ex. 1002
`Broadsign International, LLC Petitioner
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 2 of 9
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`digital signage 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 at least 43 patent infringement lawsuits against 65 or more defendants
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`in 17 judicial districts located throughout the United States. Upon information and belief, T-
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`Rex does not itself manufacture or sell any products or offer for sale any products or services
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`in the United 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
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`seq., and under the Patent Laws of the United States, as enacted under Title 35 of the United
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`States Code. This Court has jurisdiction over this action pursuant to 35 U.S.C. §§ 271, et
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`seq., and 28 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
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`because T-Rex regularly conducts its enforcement and licensing business in New York State.
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`T-Rex has also conducted business in and directed at New York pertaining to the Patents-in-
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`Suit. T-Rex has at least conducted business in New York by filing suit in this forum state in
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`an attempt to enforce the Patents-in-Suit. T-Rex most recently filed suit in the United States
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`District Court for the Southern District of New York on February 1, 2016, asserting these
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`same three Patents-in-Suit in an action against Blue Outdoor Holdings, LLC and its
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`subsidiaries (T-Rex Property AB v. Blue Outdoor LLC, et. al., 1-16-cv-00733-DLC). T-Rex
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`has filed numerous other suits asserting one or more of these patents in the United States
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`District Court for the Southern District of New York located including the following: T-Rex
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`Property AB, v. Adspace Networks, Inc., 1-15-cv-09073-DLC, filed on November 18, 2015
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 3 of 9
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`(’470 patent and ’334 patent); T-Rex Property AB, v. Interactivation Health Networks, LLC,
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`et al., 1-15-cv-08259-PKC, filed on October 20, 2015 (’470 patent); T-Rex Property AB, v.
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`Wellness Network, LLC, 1-15-cv-07847-PKC, filed on October 5, 2015 (’470 patent); and T-
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`Rex Property AB, v. Captivate, LLC, 1-15-cv-04188-PAE, filed on May 29, 2015 (’470
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`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
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`T-Rex is subject to personal jurisdiction in this judicial district and has conducted business in
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`this judicial district. Additionally, T-Rex has accused at least two of BroadSign’s customers
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`(Blue 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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`THE 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,
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`title and interest in and to the Patents-in-Suit, including the right to assert all causes of action
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`arising 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
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`information, advertising, medical information and other content on digital displays over a
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`digital signage network in locations that are accessible to the public such as at airports, in
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`elevators, in shopping malls and at medical facilities (hereinafter referred to as “Digital
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`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
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`network of BroadSign Players associated with the digital displays, and among other things,
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`upload desired content, book and manage advertising campaigns and monitor network health.
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 4 of 9
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`The BroadSign Players organize the content based on booked advertising campaigns and
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`enable 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
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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, was sued on May 27, 2016, in
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`the United States District Court for the Northern District of Illinois. A copy of the Health
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`Media Network LLC (“HMN”) complaint is annexed hereto as Exhibit 4. In that complaint,
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`T-Rex accuses BroadSign’s customer of infringing the ’470 patent and identifies the
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`allegedly infringing devices and systems as the defendant’s “digital health media advertising
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`network” (Exhibit 4 at 15). The accused “digital health media advertising network” which T-
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`Rex claims to infringe the ’470 patent is the product that BroadSign sold and delivered to
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`defendant Health Media Network. 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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`HMN has also been accused by T-Rex of infringing the ’334 patent (Exhibit 4
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`at 16). Again, T-Rex identifies HMN's “digital health media advertising network” provided
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`to HMN by BroadSign as the allegedly infringing product. HMN has no other platform
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`provider for its “digital health media network.”
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`13.
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`HMN has also been accused by T-Rex of infringing the ’603 patent (Exhibit 4
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`at 18). Again, T-Rex identifies HMN's “digital health media advertising network” provided
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`to HMN by BroadSign as the allegedly infringing product. HMN has no other platform
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`provider for its “digital health media network.”
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`14.
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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-
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`Suit, there is a real, immediate and justiciable controversy between T-Rex and BroadSign
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`concerning infringement of sufficient immediacy to warrant the issuance of a declaratory
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 5 of 9
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`judgment. There is a real and palpable threat of suit by T-Rex against BroadSign and/or
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`against additional BroadSign customers arising from their use of BroadSign’s products. This
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`threat is real and not idle not only because of the suits against BroadSign’s existing
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`customers, but also because T-Rex has filed at least 43 patent infringement suits asserting
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`one or more of these same patents in 17 separate judicial districts throughout the United
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`States.
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`15.
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`Given the lawsuits against BroadSign’s customers and T-Rex’s litigious
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`business model and conduct, T-Rex’s actions have placed a cloud over BroadSign and its
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`business and have injured or are injuring BroadSign’s business, creating a concrete and
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`immediate justiciable controversy between BroadSign and T-Rex. BroadSign cannot simply
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`stand by while its business suffers irreparable harm to await yet another filing of litigation by
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`T-Rex at a future date. BroadSign seeks a declaratory judgment so that its business can
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`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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`16.
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`BroadSign repeats and reasserts each of the allegations contained in
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`paragraphs 1 through 15 as if fully set forth herein.
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`17.
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`BroadSign has not directly infringed and does not directly infringe, either
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`literally or under the doctrine of equivalents, any valid and enforceable claim of the ’470
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`patent.
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`18.
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`BroadSign has not indirectly infringed and does not indirectly infringe any
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`valid and enforceable claim of the ’470 patent, either by inducing infringement or
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`contributory infringement.
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 6 of 9
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`19.
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`T-Rex has accused BroadSign’s products of infringing at least claims 25 and
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`26 of the ’470 patent. Claim 26 depends from claim 25.
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`20.
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`BroadSign’s products do not infringe claim 25 of the ’470 patent, and
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`therefore do not infringe any dependent claim of claim 26, for at least the reason that
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`BroadSign’s products do not “receiv[e] control instructions from at least one external
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`information mediator” as required by the claim.
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`21.
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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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`COUNT TWO
`Declaratory Judgment of Non-Infringement of U.S. Patent No. 7,382,334
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`22.
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`BroadSign repeats and reasserts each of the allegations contained in
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`paragraphs 1 through 15 as if fully set forth herein.
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`23.
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`BroadSign has not directly infringed and does not directly infringe, either
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`literally or under the doctrine of equivalents, any valid and enforceable claim of the ’334
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`patent.
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`24.
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`BroadSign has not indirectly infringed and does not indirectly infringe any
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`valid and enforceable claim of the ’334 patent, either by inducing infringement or
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`contributory infringement.
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`25.
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`T-Rex has accused BroadSign’s products of infringing at least claims 22 and
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`32 of the ’334 patent.
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`26.
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`BroadSign’s products do not infringe claim 22 of the ’334 patent for at least
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`the reason that BroadSign’s products do not “us[e] a control center for coordinating and
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`controlling electronic displays.” Similarly, claim 32 of the ’334 patent is not infringed for at
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`least the reason that BroadSign’s products do not have the claimed “computerized control
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`center means.”
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 7 of 9
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`27.
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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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`28.
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`BroadSign repeats and reasserts each of the allegations contained in
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`paragraphs 1 through 15 as if fully set forth herein.
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`29.
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`BroadSign has not directly infringed and does not directly infringe, either
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`literally or under the doctrine of equivalents, any valid and enforceable claim of the ’603
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`patent.
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`30.
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`BroadSign has not indirectly infringed and does not indirectly infringe any
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`valid and enforceable claim of the ’603 patent, either by inducing infringement or
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`contributory infringement.
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`31.
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`T-Rex has accused BroadSign’s products of infringing at least claims 42 and
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`43 of the ’603 patent. Claims 42 and 43 depend from claim 13.
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`32.
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`BroadSign’s products do not infringe claim 13 of the ’603 patent, and
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`therefore do not infringe any dependent claim of claim 13, for at least the reason that
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`BroadSign’s products do not include the claimed “network interconnecting a plurality of
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`electronic displays provided at various geographic locations.”
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`33.
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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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`34.
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`BroadSign repeats and reasserts each of the allegations contained in
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`paragraphs 1 through 15 as if fully set forth herein.
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`35.
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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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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 8 of 9
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`36.
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`As of January 16, 2007, when the ’470 patent reissued, BroadSign was selling
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`the product that has been accused by T-Rex of infringement in lawsuits against BroadSign’s
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`customers.
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`37.
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`38.
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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
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`the ’534 patent as originally issued.
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`39.
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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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`40.
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`As a result of the acts described herein, there exists a substantial controversy
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`of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
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`41.
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`An actual and justiciable controversy exists between BroadSign and T-Rex as
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`to whether BroadSign has absolute and/or equitable intervening rights. A judicial declaration
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`is necessary and appropriate so that BroadSign may ascertain its rights regarding the ’470
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`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
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`is 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
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`is 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
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`is infringed by BroadSign;
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`D.
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`a declaratory judgment that BroadSign has absolute and/or equitable
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`intervening rights pursuant to 35 U.S.C. § 252 with respect to the ’470 patent;
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`Case 1:16-cv-04586-LTS Document 1 Filed 06/16/16 Page 9 of 9
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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
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`participation with any of them, from alleging infringement or instituting an action based on
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`infringement of the ’470 patent, ’334 patent, and ’603 patent against BroadSign or any of
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`BroadSign’s customers or downstream users of 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
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`in 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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`JURY TRIAL DEMANDED
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`Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff BroadSign
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`hereby demands a trial by jury on all issues so triable.
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`Dated: June 16, 2016
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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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