`
`
`
`
`
`
`
`
`Case: IPR2018-01592
`Patent No.: 9,320,122
`
`EXHIBIT 1013
`
`PRIME WIRE & CABLE, INC.
`
` Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
` Patent owner
`
`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF NORTH CAROLINA
`
`
`
`
`
`
`
`
`Jasco Products Company, LLC,
`)
`
`
`)
`
`
`)
`
`)
`
`)
`
`)
`Prime Wire & Cable, Inc.,
`)
`
`)
`
`)
`)
`
`
`
`
`
`
`
`Defendant.
`
`Plaintiff;
`
`
`
`v.
`
`
`
`
`
`
`Civil Action No. 5:18-cv-44
`
`Jury Trial Demanded
`
`
`
`
`
`
`COMPLAINT
`
`
`Comes now, Plaintiff Jasco Products Company, LLC, and files this
`
`complaint against Defendant Prime Wire & Cable, Inc., alleging the following:
`
`Parties, Jurisdiction, and Venue
`
`1.
`
`This civil action arises under the Patent Laws of the United States, United
`
`States Code, Title 35, Section 1 et seq., and in particular, 35 U.S.C. § 271.
`
`2.
`
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`28 U.S.C. §§ 1331 and 1338(a).
`
`3.
`
`Plaintiff’s claims in the Complaint arise under the Patent Laws of the United
`
`States, United States Code, Title 35, Section 1 et seq., and in particular, 35
`
`U.S.C. § 271.
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 1 of 11
`
`
`
`4.
`
`This Court also has jurisdiction over the subject matter of this action under
`
`the provisions of 28 U.S.C. § 1332(a) in that the matter in controversy
`
`exceeds the sum or value of $75,000.00 exclusive of interest and costs, and
`
`is between citizens of different states.
`
`5.
`
`Plaintiff Jasco Products Company, LLC (hereinafter “Plaintiff”) is a limited
`
`liability company organized and existing under the laws of the State of
`
`Oklahoma. Plaintiff’s principal place of business is located at 10 E.
`
`Memorial Road Oklahoma City, Oklahoma 73114. Plaintiff also has a place
`
`of business located at 10228 Bailey Road, Unit 238, Cornelius, North
`
`Carolina 28031. Plaintiff develops and manufactures products in the fields
`
`of home automation, lighting, security, and home entertainment, and power
`
`and mobility products. Plaintiff’s product offerings include a variety of
`
`timers.
`
`6.
`
`Upon information and belief, Defendant Prime Wire & Cable, Inc.
`
`(hereinafter “Defendant”) is a California corporation doing business in the
`
`State of North Carolina.
`
`7.
`
`Defendant may be served process by and through its registered agent,
`
`William Ferlato, at 179 Gasoline Alley, Suite 103, Mooresville, North
`
`Carolina 28117.
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 2 of 11
`
`
`
`8.
`
`Upon information and belief, Defendant manufactures and sells electrical
`
`cords, surge protectors, power strips, timers, remotes, lighting, and related
`
`accessories.
`
`9.
`
`Defendant’s products include EZ-SET timer model #LTNIDP12 (item
`
`#0869902), EZ-SET timer model #LTNODP23 (item #0869903), EZ-SET
`
`timer model #LTNIWP (item #0869904), and EZ-SET timer model
`
`#LTNIDEZ1 (item #0864292) (referred to collectively herein as the
`
`“accused products”).
`
`10. This Court has personal jurisdiction over Defendant in this action pursuant
`
`to the North Carolina Long-Arm Statute §1-75.4.
`
`11. Defendant is engaged in substantial activity within the State of North
`
`Carolina.
`
`12. Defendant maintains a physical place of business within the State of North
`
`Carolina, and regularly conducts business within the State of North
`
`Carolina.
`
`13. Upon information and belief, Defendant maintains a physical location at
`
`179 Gasoline Alley, Suite 103, Mooresville, North Carolina 28117, at which
`
`Defendant regularly conducts business.
`
`14. Defendant has committed acts within the State of North Carolina that relate
`
`to and give rise to this action. Such acts include, inter alia, offering to sell
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 3 of 11
`
`
`
`and/or selling products infringing U.S. Patent No. 9,320,122 in the State of
`
`North Carolina.
`
`15. Products manufactured by Defendant have been used within the State of
`
`North Carolina in the ordinary course of trade.
`
`16. Solicitation or services activities have been carried on within the State of
`
`North Carolina by or on behalf of Defendant.
`
`17. Upon information and belief, solicitation or services activities have been
`
`carried on by or on behalf of Defendant at Defendant’s office at 179
`
`Gasoline Alley, Suite 103, Mooresville, North Carolina 28117.
`
`18. This Court is a proper venue for this action pursuant to 28 U.S.C. §1400.
`
`19. Defendant resides within this judicial district, and/or Defendant has
`
`committed acts of infringement and has a regular and established place of
`
`business in this judicial district.
`
`20. Defendant has committed acts of infringement within this judicial district by
`
`offering to sell and selling products infringing U.S. Patent No. 9,320,122
`
`within this judicial district.
`
`21. Defendant’s EZ-SET timer model #LTNIDP12 (item #0869902), EZ-SET
`
`timer model #LTNODP23 (item #0869903), EZ-SET
`
`timer model
`
`#LTNIWP (item #0869904), and EZ-SET timer model #LTNIDEZ1 (item
`
`#0864292) infringe U.S. Patent No. 9,320,122.
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 4 of 11
`
`
`
`22. Defendant has offered to sell and/or has sold within this judicial district EZ-
`
`SET timer model #LTNIDP12 (item #0869902), EZ-SET timer model
`
`#LTNODP23 (item #0869903), EZ-SET timer model #LTNIWP (item
`
`#0869904), and EZ-SET timer model #LTNIDEZ1 (item #0864292).
`
`23. Defendant’s accused products are sold in Lowe’s stores within this judicial
`
`district. A receipt for the purchase of Defendant’s EZ-SET timer model
`
`#LTNIDP12 (item #0869902), EZ-SET timer model #LTNODP23 (item
`
`#0869903), EZ-SET timer model #LTNIWP (item #0869904), and EZ-SET
`
`timer model #LTNIDEZ1 (item #0864292) from a Lowe’s store located at
`
`5310 Ballantyne Commons Parkway, Charlotte, North Carolina 28277 on
`
`March 9, 2018 is attached to this Complaint as Exhibit 1.
`
`24. Upon information and belief, Defendant has offered to sell and sold the
`
`accused products to Lowe’s Companies, Inc. and/or Lowe’s Home Centers,
`
`LLC.
`
`25. Upon information and belief, Lowe’s Companies, Inc. is a North Carolina
`
`corporation having a principal office within this judicial district at 1000
`
`Lowe’s Blvd., Mooresville, North Carolina 28117.
`
`26. Upon information and belief, Lowe’s Home Centers, LLC is a North
`
`Carolina limited liability company having a principal office within this
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 5 of 11
`
`
`
`judicial district at 1605 Curtis Bridge Rd., Wilkesboro, North Carolina
`
`28697.
`
`27. Defendant has a regular and established place of business at 179 Gasoline
`
`Alley, Suite 103, Mooresville, North Carolina 28117.
`
`28. The “Contact” page from Defendant’s website lists 179 Gasoline Alley,
`
`Suite 103, Mooresville, North Carolina 28117 as one of three physical
`
`offices of Defendant.
`
`29. A print-out of the “Contact” page (http://www.primewirecable.com/contact-us-61)
`
`
`
`from Defendant’s website is attached to this Complaint as Exhibit 2.
`
`30. Defendant’s office at 179 Gasoline Alley, Suite 103, Mooresville, North
`
`Carolina 28117 is located within this judicial district.
`
`
`
`Patent Infringement
`
`31. Plaintiff incorporates all of the allegations of the above paragraphs 1-30, as
`
`if fully set forth herein.
`
`32. U.S. Patent No. 9,320,122 (hereinafter “the ‘122 patent”) was issued by the
`
`U.S. Patent and Trademark Office on April 19, 2016. The ‘122 patent is a
`
`utility patent
`
`titled “PROGRAMMABLE LIGHT TIMER AND A
`
`METHOD OF IMPLEMENTING A PROGRAMMABLE LIGHT TIMER.”
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 6 of 11
`
`
`
`A copy of the ‘122 patent is attached to this complaint as Exhibit 3 and
`
`incorporated herein.
`
`33. Cantigny Lighting Control, LLC is the owner of the ‘122 patent by way of
`
`an assignment from the inventor John Joseph King to Cantigny Lighting
`
`Control, LLC executed on May 4, 2016. A copy of the assignment recorded
`
`in the U.S. Patent and Trademark Office at Reel 038505, Frame 0166 is
`
`attached to this Complaint as Exhibit 4.
`
`34. Cantigny Lighting Control, LLC has granted an exclusive license of the
`
`‘122 patent to Plaintiff. A redacted copy of the license agreement and
`
`license agreement amendment is attached to this complaint as Exhibit 5 and
`
`incorporated herein. (The attached copy has been redacted to remove
`
`confidential financial terms and bank account information.)
`
`35. Plaintiff is the exclusive licensee of the ‘122 patent, and has the exclusive
`
`right to make, have made, use, sell, offer for sale and import products
`
`covered by the ‘122 patent. The license agreement also grants Plaintiff the
`
`right to bring actions for infringement of the ‘122 patent.
`
`36. Defendant has infringed the ‘122 patent by making, offering for sale, and/or
`
`selling in the United States, and/or importing into the United States,
`
`products that embody the patented invention, and will continue to do so
`
`unless enjoined by this court.
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 7 of 11
`
`
`
`37. Defendant has made, offered for sale and/or sold in the United States timer
`
`products identified as EZ-SET timer model #LTNIDP12 (item #0869902),
`
`EZ-SET timer model #LTNODP23 (item #0869903), EZ-SET timer model
`
`#LTNIWP (item #0869904), and EZ-SET timer model #LTNIDEZ1 (item
`
`#0864292) (referred to collectively herein as the “accused products”).
`
`Samples of Defendant’s EZ-SET
`
`timer model #LTNIDP12
`
`(item
`
`#0869902), EZ-SET timer model #LTNODP23 (item #0869903), EZ-SET
`
`timer model #LTNIWP (item #0869904), and EZ-SET timer model
`
`#LTNIDEZ1 (item #0864292) are shown in their packaging in photographs
`
`attached to this Complaint as Exhibits 6, 7, 8 and 9, respectively.
`
`38. Upon information and belief, Defendant has imported the accused products
`
`into the United States.
`
`39. Defendant’s EZ-SET timer model #LTNIDP12 (item #0869902), EZ-SET
`
`timer model #LTNODP23 (item #0869903), and EZ-SET timer model
`
`#LTNIWP (item #0869904) infringe at least claims 1, 6, 7, 8, 9, 10, 11, 12,
`
`13, 14, 15 and 20 of the ‘122 patent. Defendant’s EZ-SET timer model
`
`#LTNIDEZ1 (item #0864292) infringe at least claims 1 and 15 of the ’122
`
`patent.
`
`40. Defendant has willfully infringed the ‘122 patent. Defendant has continued
`
`to make, offer for sale, and/or sell the accused products in the United States
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 8 of 11
`
`
`
`after having been put on actual notice of the ‘122 patent and Plaintiff’s
`
`claim of infringement of the ‘122 patent.
`
`41. On December 8, 2017, Plaintiff sent via certified mail, return receipt
`
`requested, a
`
`letter addressed
`
`to Defendant’s president stating
`
`that
`
`Defendant’s accused products infringe the ‘122 patent. (A copy of
`
`Plaintiff’s letter and enclosures is attached to this Complaint as Exhibit 10.)
`
`In a letter dated December 14, 2017, an attorney representing Defendant
`
`acknowledged Defendant’s receipt of Plaintiff’s letter. (A copy of
`
`Defendant’s letter is attached to this Complaint as Exhibit 11.)
`
`Prayer for Relief
`
`
`
`WHEREFORE, Plaintiff respectfully asks the Court to grant the following
`
`relief:
`
`A.
`
`That the Court enter preliminary and permanent injunctions against
`
`Defendant and its officers, directors, agents, employees, and all those
`
`in active concert or participation with Defendant, enjoining them
`
`from infringing the ‘122 patent pursuant to 35 U.S.C. § 283.
`
`
`
`B.
`
`That Plaintiff be granted an accounting for damages resulting from
`
`Defendant’s infringement of the ‘122 patent;
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 9 of 11
`
`
`
`C.
`
`That Plaintiff be awarded judgment against Defendant for damages
`
`resulting from Defendant’s infringement of the ‘122 patent, and that
`
`such damages be trebled pursuant to 35 U.S.C. § 284.
`
`D.
`
`That Plaintiff be awarded its reasonable attorneys’ fees pursuant to 35
`
`U.S.C. § 285;
`
`E.
`
`That the Court award Plaintiff interest, costs, and such further relief
`
`
`
`that this Court deems just and equitable;
`
`F.
`
`That the Court order Defendant to pay Plaintiff all reasonable taxable
`
`costs in a sum and manner deemed appropriate by this Court based on
`
`deliberate and willful infringement of the ‘122 patent by Defendant as
`
`set forth in this Complaint;
`
`G.
`
`That a trial by jury be had on all issues so triable; and
`
`H.
`
`Such other and further relief as the Court may deem just and proper,
`
`in law or equity.
`
`Respectfully submitted, this the 14nd day of March, 2018.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Stephen Ashley
`Stephen S. Ashley, Jr.
`N.C. State Bar No. 27,649
`ASHLEY LAW FIRM P.C.
`10800 Sikes Place, Suite 100
`Charlotte, NC 28277
`Telephone: (704) 847-1300
`Facsimile:
`(704) 847-1301
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 10 of 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`sa@ashleypatentlaw.com
`
`E-mail:
`
`
`Attorney for Plaintiff Jasco Products Company, LLC
`
`Case 5:18-cv-00044-RJC-DSC Document 1 Filed 03/14/18 Page 11 of 11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
